Smithkline Beecham Limited v Nova Pharmaceuticals Australasia Pty Limited

[2024] ATMO 141

TRADE MARKS ACT 1995

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

Re:Opposition by SmithKline Beecham Limited to registration of trade mark application number 2194254 (class 5) - NOVADART - in the name of Nova Pharmaceuticals Australasia Pty Limited

Delegate:

Tracey Berger

Representation:

Opponent: Samuel J. Hallahan of Counsel instructed by Davies Collison Cave

Applicant: No appearance

Decision:

2024 ATMO 141

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 42(b), 44 and 60 pursued – s 60 ground established – trade mark refused

Background

1. This decision concerns an opposition by SmithKline Beecham Limited (‘Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth)[1] to registration of the trade mark which is the subject of the application detailed below in the name of Nova Pharmaceuticals Australasia Pty Limited (‘Applicant’):

   [1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.

Number	Trade Mark	Filing/Priority Date	Specification
2194254	NOVADART (‘Trade Mark’)	14 July 2021	Class 5: Pharmaceutical products (‘Applicant’s Goods’)

1. Following the advertisement of acceptance of the Application, the Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 15 February 2022 followed by its Statement of Grounds and Particulars on 15 March 2022.  The Applicant filed a Notice of Intention to Defend the opposition on 20 May 2022.

2. The parties were then able to file evidence in accordance with the Regulations. The Opponent filed Evidence in Support (‘EIS’) of the opposition on 26 August 2022. The EIS consists of a declaration of Joanne Green, Authorised Attorney of GlaxoSmithKline plc, made on 25 August 2022 with Exhibits JG-1 to JG-15 and Confidential Annexure A (‘Green Declaration’). No other evidence was filed in the proceedings.

3. Once the evidence stage ended, the parties were given the opportunity to request a hearing.  The Opponent requested an oral hearing and the Applicant did not ask to be heard.  I heard this matter as a delegate of the Registrar of Trade Marks on 20 June 2024.  At the hearing, Samuel J Hallahan of Counsel, instructed by Carly Mansell of Davies Collison Cave Pty Ltd, made submissions on behalf of the Opponent.  The Opponent’s oral submissions were supplemented with a written summary of submissions filed prior to the hearing.  I make my decision based on the aforementioned materials and the written and oral submissions of the Opponent.

Grounds, onus and Relevant Date

1. In its SGP, the Opponent nominated grounds of opposition under ss 42(b), 44, 58A and 60.   As the Applicant did not file any evidence seeking registration under s 44(4), the s 58A ground of opposition is not available and was abandoned. 

2. The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[2]  The standard of proof is the ordinary civil standard of the balance of probabilities.[3]

   [2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [3] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

3. The date at which the rights of the parties are to be determined is 14 July 2021 (‘Relevant Date’) being both the filing date and priority date of the Application.

Opponent’s evidence

1. As noted above, only EIS was filed during the proceedings and this evidence is summarised below..

2. The Opponent was formed in 1989 as part of the GlaxoSmithKline group of companies (‘GSK’), one of the world’s largest pharmaceutical companies. 

3. The Opponent is the registered owner of the following Australian trade marks (‘Opponent’s Marks’):

Number	Trade Mark	Priority Date	Specification
726100	AVODART	14 September 1996	Class 5: Pharmaceutical and medicinal preparations and substances for human use
1264174	DUODART	13 August 2008	Class 5: Pharmaceutical preparations and substances

1. Green attests that within GSK, the Opponent licences and controls the use of the AVODART and DUODART trade marks, and exercises quality control with respect to the AVODART and DUODART products.

2. GSK was granted an Australian patent for its chemical compound Dutasteride in August 1998 (‘Opponent’s Patent’) used for the treatment of the symptoms of enlarged prostrate, known as Benign Prostatic Hyperplasia.  The Opponent’s Patent expired in November 2017.

3. The first products to incorporate Dutasteride were sold under the mark AVODART and those products have been available in Australia since at least May 2009.  In 2011, AVODART pharmaceuticals became available through the Australian Government’s Pharmaceutical Benefits Scheme. Confidential annual sales figures for the AVODART products in Australia and globally are provided.  These figures show reasonably significant sales volumes since at least 2011.  The Green Declaration attests that the Opponent’s AVODART pharmaceuticals are well known in Australia.

4. Since at least February 2011, the Opponent has continuously sold its DUODART products in Australia which also contain Dutasteride (and another active ingredient) for the treatment of Benign Prostatic Hyperplasia.

5. Until the expiration of the Opponent’s Patent, products bearing the Opponent’s Marks were the only pharmaceuticals available in Australia for treatment of the symptoms of enlarged prostrate.  Once the patent expired, other Dutasteride products came onto the Australian market.  The Green Declaration provides details of the Opponent’s market share for its AVODART goods from 2011 until July 2022 which shows that the Opponent has maintained significant market share since 2017.

6. According to the Green Declaration, a search of the Pharmaceuticals in Use database indicates that the Opponent’s Marks are the only ‘-DART’ suffix marks in use in Australia for pharmaceuticals.

7. Advertising of pharmaceutical products is regulated in Australia.  However, the products offered under the Opponent’s Marks have received media publicity in Australia and overseas including in The Australian and Melbourne Herald Sun.  Examples of the Australian articles and a list of the overseas publications are exhibited to the Green Declaration.

8. In addition, the Opponent provides advisory information on the pharmaceuticals bearing the Opponent’s Marks for consumers and health care professionals on its website.  Examples of product information sheets for AVODART and DUODART goods are provided as well as packaging samples.   

9. The Green Declaration declares that use of the Trade Mark is likely to deceive or cause confusion or mislead consumers who may be caused to wonder whether products bearing the Trade Mark originate from the Opponent due to the similarities between the Opponent’s Marks and Trade Mark.  In support of this contention, the Green Declaration provides the results of a search using Phonetic and Orthographic Computer Analysis (‘POCA’) software used by the United States Federal Drug Administration (‘FDA’) to perform safety reviews of proposed proprietary names for all drug applications it receives.  The FDA considers any similarity score above 70% to be high.  The results of the comparison of NOVADART with AVODART using the POCA software were 80% for orthographic similarity and 70% for  phonetic similarity giving a combined score of 75%.  For NOVADART and DUODART, the orthographic similarity score was 73% and phonetic similarity was 69% for a combined score of 71%.

Discussion

Section 60

1. Section 60 provides:

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

   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.

1. To establish this ground, the Opponent must establish:

   ·     A reputation was acquired in another mark in Australia before the Relevant Date; and

   ·     That because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.

Reputation

1. Reputation, in the context of section 60, refers to the ‘recognition of [the mark] by the public generally’.[4]  It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[5]

   [4] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

   [5] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘Conagra’).

2. The reputation of a trade mark may be established in various ways, including by demonstrating a significant number of people have been exposed to the trade mark,[6] or providing evidence of high volume of sales, advertising expenditure or other promotion of goods or services to which the trade mark applies.[7] There are also qualitative aspects to the reputation of a trade mark, which concern the value or esteem that the public hold for the trade mark.[8]

   [6] Ibid [118].

   [7] Rodney Jane Racing Pty Ltd v Monster Energy Company [2019] FCA 923, [83] (O’Bryan J).

   [8] Ibid.

3. Generally, the relevant reputation must be amongst a significant or substantial number of persons.[9]  The assessment of what is ‘significant or substantial’ must be properly and sensibly applied[10] and may depend on the specialised nature of the relevant market.[11]   

   [9] See Renaud Cointreau & Cie v Cordon Bleu International Ltee [2001] FCA 1170 (Moore, Tamberlin and Goldberg JJ and ConAgra (n5) [132].

   [10] ‘Bali’ Trade Mark [1969] RPC 472, (496).

   [11] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [20].

4. Section 60 does not require that the goods of the Opponent be similar nor is there a requirement that the relevant trade marks be substantially identical or deceptively similar.  However, where the marks are similar and/or there is a nexus between the goods claimed and those in which the relevant reputation lies, there is more likely to be confusion.

5. In its SGP, the Opponent particularises this ground of opposition as set out below:

   The Opponent has, and as at the Priority Date had:

   (a) a significant reputation in its AVODART mark as a result of the continuous use and significant promotion of that trade mark by the Opponent and/or its predecessors in title in relation to pharmaceutical products in Australia since at least as early as 2009 and internationally since at least as early as 2001;

   (b) a significant reputation in the Opponent's DART marks as a result of the continuous use and significant promotion of those trade marks by the Opponent and/or its predecessors in title in relation to pharmaceutical products beginning with the earliest of those trade marks internationally since at least as early as 2001, and in Australia since at least as early as 2009.

   As a result, the use of the Applicant's NOVADART mark in relation to the goods specified in the Application would be likely to cause confusion (including initial interest confusion).

6. In the present case, the Opponent has used its marks AVODART and DUODART for over a decade before the Relevant Date in relation to the same goods claimed by the Applicant.  For a significant portion of time, these were the only pharmaceuticals available in the Australian market for the treatment of an enlarged prostate and AVODART products have been listed on the Australian Pharmaceutical Benefits Scheme for 10 years before the Relevant Date.  Hence I believe that at the Relevant Date, the Opponent’s AVODART pharmaceuticals would have been known to relevant consumers such as medical professionals and Australians with Benign Prostatic Hyperplasia.  Even after the Opponent’s Patent expired, the Opponent’s AVODART product has remained the market leader for pharmaceuticals for treating enlarged prostate.  I am satisfied that the Opponent’s mark AVODART had a reputation in Australia for pharmaceuticals at the Relevant Date.

7. The Opponent argues that this reputation extends to the DUODART mark as part of the Opponent’s ‘family’ of ‘-DART’ suffix marks by virtue of the DUODART products being the second pharmaceutical manufactured by the Opponent for the treatment of enlarged prostate containing dutasteride which is available in Australia, with the prefix ‘DUO-‘ referencing that the product contains two active ingredients and the suffix ‘-DART’ referring to the earlier product AVODART. 

8. In my view, two trade marks with a common characteristic is not sufficient to constitute a ‘family’ of marks.  Whilst the DUODART product may have benefited from being only one of two pharmaceuticals available in Australia for the treatment of enlarged prostate and use of this mark may have enhanced the reputation in the AVODART mark, there is not sufficient evidence in terms of the extent of sales or market share for me to be satisfied that a separate reputation exists in the DUODART mark.   

Likelihood of deception or confusion

1. Having found that a reputation existed in the AVODART mark at the Relevant Date, I must now determine whether use of the Trade Mark is likely to deceive or cause confusion.

2. A likelihood of deception or confusion will be found to exist if ‘a number of persons are caused to wonder whether two products…come from the same source.  The threshold for confusion is not high[12] and it is enough if the ordinary person entertains a reasonable doubt’.[13]

   [12] Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).

   [13] Registrar of Trade Marks v Woolworths [1999] FCA 1020, [50] (French J).

3. Further, the Registrar’s delegate noted in Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd that: 

   The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.[14]

   [14] [2010] ATMO 5, [39] (Hearing Officer D Lyons).

4. The Opponent submits that confusion or deception is likely given the extent of the reputation in the AVODART mark, the similarities of the marks AVODART and NOVADART and fact that there are no other ‘-DART’ suffix marks in use in Australia for pharmaceuticals.

5. I agree with the Opponent that the suffix ‘-DART’ is distinctive having no meaning in relation to pharmaceuticals.  There are other similarities between the marks AVODART and NOVADART with both marks consisting of three syllables, comprising similar letters and having a degree of aural resemblance.  The similarities between the marks AVODART and NOVADART adds to the potential for confusion particularly when the Opponent is the exclusive user of ‘-DART’ suffix marks in Australia for pharmaceuticals.  In all the circumstances, I am satisfied that a significant number of relevant consumers would be caused to wonder whether pharmaceuticals provided under the Trade Mark emanate from the same source as the Opponent’s AVODART pharmaceuticals or are otherwise related. 

6. The Opponent has established a ground of opposition under s 60.

Decision

1. I find that the Opponent has succeeded in its opposition under s 60 and I refuse to register the Trade Mark under application 2194254. 

2. I direct that the refusal be recorded one month from the date of this decision. If the Registrar is served with a notice of appeal before that time, I direct that the refusal shall not occur until the appeal has been withdrawn or discontinued. Otherwise the disposition of this application should be in accordance with the Court’s orders or directions.

3. The Opponent has requested an award of costs. As costs generally follow the event, I award cots against the Applicant under s 221 in accordance with Schedule 8 of the Regulations.

Tracey Berger
Hearing Officer

Delegate of the Registrar of Trade Marks

2 August 2024