Standard Homeopathic Company Inc

[1999] ATMO 50

TRADE  MARKS  ACT  1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

WITH REASONS

RE:Trade Mark Application 727061 (CALMS FORTE) in the name of STANDARD HOMEOPATHIC COMPANY INC - Ex Parte.

Background

The applicant's trade mark consists of the word combination calms forte, without adornment, and claims goods in class 5 being Pharmaceutical preparations including medication for the temporary symptomatic relief of simple nervous tension and insomnia (sleeplessness).

The trade mark was examined and the third report maintained grounds for rejection under section 41 of the Trade Marks Act1995 (the Act).  The attorneys for the applicant then sought a hearing, which I conducted in Canberra on 25 March 1999.

Submissions

Mr Brian Hendy of the Melbourne attorney firm Carter Smith & Beadle appeared for the applicant.  Mr Hendy submitted that calms forte was a term coined by the applicant and was not the ordinary or natural way to describe Pharmaceutical preparations including medication for the temporary symptomatic relief of simple nervous tension and insomnia (sleeplessness) - the designated goods.  Furthermore calms forte, he claims, has not been used by others as a bona fide description of similar goods, a more apt description being words such as calming, relaxing, relaxant or sleep aid.

Submissions were contained in a declaration by the applicant setting out details of the extent and duration of use of the trade mark in the USA since 1960 with details of sales and promotional expenditure.  Supporting declarations were submitted from persons in the US trade who recognise calms forte as a trade mark of the applicant.

The attorney drew my attention in his submission to other registered trade marks on the Australian trade mark register being calmettes, numbers 521542 and 722145; arthritis calm, number 764256 and kalma, number 614722, all for the same goods in class five as the present application, and to calming effects, number 710360 for cosmetics in class 3.  The attorney submitted these trade marks provide sufficient precedent for registration of the present trade mark as a trade mark inherently capable of distinguishing the applicant's goods.

Discussion

Section 41 of the Act specifies registrability in terms of whether or not a trade mark is capable of distinguishing an applicant's goods or services.

Section 41 states:

(1)…

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

(3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4) Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5) If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a) the Registrar is to consider whether, because of the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii) the use, or intended use, of the trade mark by the applicant;

(iii) any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services--the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

(c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services--the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

(6) If the Registrar finds that the trade mark is not inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant--the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b) in any other case--the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Ability to distinguish

The section 41 objection was maintained by the examiner on the grounds that calms forte described pharmaceutical preparations to relieve nervous tension. As such, it was held that others would need to use these words to describe their similar pharmaceuticals. calms forte was therefore not capable of distinguishing the designated goods and accordingly section 41 applied.

I agree with the examiner that Forte does not assist in adapting the mark as a whole to distinguish, Forte being a descriptive term common to the pharmaceutical trade.  The issue is therefore whether the remaining part of the mark, the word Calms, is a word that is inherently adapted to distinguish the designated goods, or if Calms is not inherently adapted to distinguish, then whether it is to some extent so adapted.
The ordinary description of medication for the relief of nervous tension or insomnia, or of its intended purpose, would be relaxants or sedatives.  However while it may not be entirely clear to the ordinary user how these medications act on the nervous system, or whether in fact they at all act on the nervous system, it is nevertheless clear buyers of these medications would expect them to have an effect of calming nerves or act to calm nerves; Sigma Co. Ltd's Appn [1].  The Decision of the Deputy Registrar in Sigma's Appn, decided under the 1905 Act, found Calms to directly describe a property of pharmaceutical preparations to relieve nausea and was accordingly not a 'registrable particular'.  However the present Act imposes a less stringent test of registrability than the earlier Acts.  The present test to decide if a trade mark is a 'registrable particular' is not whether it has 'direct reference' but whether it is capable of distinguishing; Blount Inc v Registrar of Trade Marks[2]. 

[1]  (1955) 25 AOJP 22 at 1151

[2] (1998) 40 IPR 498

As I have mentioned above medication for the relief of nervous tension or insomnia the would ordinarily be described as sedatives or relaxants. Calms is not therefore a word ordinarily used to these goods and is therefore to some extent inherently adapted to distinguish these goods. In these circumstances I find consideration of the registrability of Calms forte falls within the provision of section 41(5) of the present Act.

In these circumstances it remains for me now to address in terms of s41(5), the trade mark's use, or to consider any other circumstances that might demonstrate the trade mark does, or will distinguish the designated goods.

Section 41(5) evidence

Following the hearing the applicant's attorney filed evidence of the trade mark's use. The mark has been extensively used in the United States since 1960 and has significant product sales and promotion expenditure since 1990.  The mark is presently registered in the US for medication for the temporary symptomatic relief of simple nervous tension and insomnia and in New Zealand for Pharmaceutical, veterinary and sanitary preparations; medication for the temporary symptomatic relief of simple nervous tension and insomnia (sleeplessness).
The applicant's claim that calms forte distinguishes is supported by five other US industry declarants who are familiar with the trade mark and who recognise nervous tension and insomnia medication sold under the calms forte trade mark as originating from the applicant

Analysis

As I have said the trade mark is to some extent adapted to distinguish so the provisions of section 41(5)(a) apply. Subsection (5) requires me, when considering whether a trade mark does or will distinguish, to take into account the combined effect of the extent to which the trade mark is inherently adapted to distinguish, and the trade mark's use, intended use, or any other circumstance.

In the present case the applicant has registered the trade mark in the US and demonstrated use of the trade mark for nervous tension and insomnia medications since 1960 with significant product promotion and sales since 1990.  The trade mark's ability to distinguish in the US market is supported by independent declarations from trade operatives and registration of the trade mark in the US.

The question remains whether this use overseas can serve to establish that the trade mark will distinguish the applicant's goods in Australia for the purposes of s41(5). In this regard use by the applicant since 1960, and significant use in the last ten years, in an overseas market are the sort of circumstances that can influence decisions as to the registrability of trade marks under the provisions of s41(5).

Gibbs J (as he then was) in Burger King v Registrar of Trade Marks said[3]:

[3] (1973) 128 CLR 417 at 423

On principle it would seem to me that evidence that a trade mark has in fact become distinctive in one market tends to show that it is capable of becoming distinctive in another market, at least if conditions in the two markets are similar.

I think there can be no doubt conditions in the US and Australian markets for the sort of nervous tension and insomnia medications claimed by the applicant are similar.  The Australian and US markets share similar cultural and societal mores, similar economic structures and conditions, similar standards of employment and education, and in both countries English is the predominant language.  These factors will all have a bearing on the type of choices people make, and on the goods they buy and tend to show that the conditions in both the US and Australian markets are similar.

The similarity between the markets is further demonstrated by the applicant's intention to market the same goods under the same name in this country with an expectation, no doubt, of repeating their US experience in this market.  However, the use the applicant has demonstrated is limited to medication for the temporary symptomatic relief of simple nervous tension and insomnia.  In these circumstances I think for the narrow range of goods, the principle set down by Gibbs J has been met, and I find that the present trade mark is capable of distinguishing in Australia those specific goods the applicant has used in the US.

Conclusion

I have considered the extent to which calms forte is adapted to distinguish together with the evidence filed and found calms forte is capable of distinguishing the specific medications referred to in the evidence.

I therefore propose to accept this trade mark for registration on condition the applicant agrees to limit the specification of goods to medication for the temporary symptomatic relief of simple nervous tension and insomnia.  I allow the applicant 28 days from the date of this decision to request this amendment, and if the specification is amended in this way I will accept the trade mark under the provisions of section 41(5). If the applicant does not agree to amend the specification of goods in this way I will reject the application for the broader specification of goods under the provisions of s41(2).

TH Turner
A/Senior Examiner
Trade Marks Hearings

17 May 1999