Stephen Hunter Pty Ltd v Sterling Winthrop Pty Ltd

[1995] ATMO 31

TRADE MARKS ACT 1955
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS,
WITH REASONS

Re:Opposition by Sterling Winthrop Pty Ltd to the registration of application 547182 in the name of Stephen Hunter Pty Ltd.

Background

Trade mark application 547182 is in the name of Stephen Hunter Pty Ltd ("the applicant").  The application is in respect of "pharmaceutical preparations and all goods in this class".  That broad description includes mainly medical and veterinary substances, pesticides and herbicides.  The trade mark the subject of the application, which was lodged on 11.12.90, is the word ZANDOL. 

The application has been accepted for registration. However, this is opposed, as provided for by sub-section 49(1) of the Trade Marks Act 1955, by Sterling Winthrop Pty Ltd ("the opponent"), on grounds which are generalised and which I will not recite at length. As argued at the hearing, the matters come down to two: that the application should be refused as use of the applicant's mark would be likely to deceive or cause confusion, and that the application is blocked by a prior registration for a deceptively similar trade mark.

After the service of evidence in support of the opposition and of evidence in answer thereto, the matter was set down for hearing on 3.3.95.  The opponent was represented by Mr Graham Halford, a patent attorney of the firm of Halford and Co.  The applicant was represented by Ms Isabel Parsons of Counsel, instructed by Messrs Corrs Chambers Westgarth, solicitors. 

At the hearing, with the consent of the opponent, I gave leave to the applicant to introduce further evidence, reserving for the opponent the option, to be exercised within 21 days from that date, of serving its own evidence in reply to the further evidence. 

The applicant did not follow the correct procedure in seeking leave.  It had not made out a declaration to support the need to introduce that further evidence, which goes to the state of the Register of Trade Marks with regard to marks in class 5 and ending in the suffix
-DOL.  Had the opponent not very fairly consented to the introduction of the further evidence, I would probably have had to refuse the leave.  I appreciate Mr Halford's fairness in allowing the evidence to be brought in; without it I would have had no option but to rely on my own knowledge of the common occurrence of the syllable in question.  The latter course is often appropriate but the one adopted by the parties allowed the matter to be fully investigated.

Having heard the parties, I turn briefly to the evidence, which I have assessed on its merits in the light of the submissions of both sides.  The applicant has taken advantage of the opportunity, extended to both sides, to make written submissions on the further evidence.  Neither side suggested that the hearing itself needed to be resumed.

Essentially, while the application has been broadly filed, the applicant apparently uses the trade mark, so far, on analgesics only.  Mr Halford criticised the paucity of evidence to substantiate that use, but nothing turns on this aspect.

The opponent's trade mark PANADOL has been registered under numbers 127289, for "an oral analgesic for use in medicine and pharmacy", and 494026, for all goods included in class five.  It has been very extensively used for analgesics.  Ms Parsons did not challenge the proposition that the opponent has an extensive reputation in respect of such goods sold under the trade mark PANADOL.

As to the law applicable, the issues hinge on the closeness or otherwise of the trade marks PANADOL and ZANDOL.  That factor is of concern under both s 33 and s 28 of the Act, though the concerns are dealt with in different ways in the two sections.

Sub-section 33(1) provides that:

Subject to this Act, a trade mark is not capable of registration by a person in respect of goods if it is substantially identical with or deceptively similar to a trade mark which is registered, or is the subject of an application for registration, by another person in respect of the same goods, of goods of the same description as those goods or of services that are closely related to those goods, unless the date of registration of the first-mentioned trade mark is, or will be, earlier than the date of registration of the second-mentioned trade mark.

The concern of section 33, noting the definition of "deceptively similar" in s 6(3), is with the deception or confusion which might reasonably arise from the notional fair use of an applicant's trade mark in the face of equally notional fair use of the opponent's registered trade mark in respect of the goods for which it is registered.  Section 33 also requires consideration of the extent of overlap or resemblance of the relevant goods, but Ms Parsons conceded that there was a direct overlap on that aspect.

The application of s 28 is more complex.  However, for reasons which follow, I am required to dismiss the opposition in its entirety.  That decision is based on the extent of differences between the applicant's mark, ZANDOL, and the mark of the opponent, both as used (relevant to s 28) and as registered (s 33).  Accordingly, it is neither necessary nor productive to go further into the operation of s 28, a conjunctive section with concerns which may go beyond the prevention of deception or confusion.

I turn, therefore, to Mr Halford's analysis, with which I entirely agree, of the issues in comparing the competing marks PANADOL and ZANDOL.  Mr Halford relied, inter alia, on the PIANOTIST case, Pianotist Co's Appn (1906) 23 RPC 774, at 777. The relevant formulation by Parker J of the question in that case has long been accepted in Australian courts:

"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 Halford argued strongly that the opponent's mark PANADOL was memorable as being of the form -ANADOL, with the middle syllable being, in his submission, an unstressed vowel; or "relatively insignificant".  The memorable weight, therefore, was argued to be in the elements -AN and -DOL, both of which are present and strongly evident in ZANDOL.

Ms Parsons took issue with this.  She noted that a video forming part of the opponent's own evidence confirms that the word PANADOL is pronounced as three syllables, just as would be expected of a mark of that general form, with the middle syllable unstressed but still evident.  I will not repeat the other distinctions she drew between the two marks in question.  They are, with no disrespect to the opponent's arguments, fairly self-evident.

As to the trade circumstances, it is clear that there are many trades at issue here.  In the main the goods specified by the applicant will be either supermarket or pharmacy lines of disinfectants, insecticides, analgesics, cough mixes and vitamins or other medical or veterinary preparations.  Some of these lines will be available for personal selection by customers, either on supermarket or pharmacy shelves, others will be available only on request made of pharmacy staff.  In addition, there are prescription lines, sold only on written authorisation.  However, there are other places at which some of the applicant's claimed goods may be sold, as in the selling of insecticides and herbicides by gardening or hardware stores, or the selling of animal medicines and remedies in pet shops or produce merchants.  Accordingly, I must, as Mr Halford reminded me, allow for the varying levels of care, attention and skill directed at the buying of these diverse products.

Ms Parsons took me to the applicant's further evidence, which establishes that a goodly number of the trade marks in class 5 end in -DOL.  Of 63 such marks with effective dates prior to that of the opposed application, 49 included pharmaceuticals and only eight of these were registered to the opponent.  This indicated, she argued, that the suffix -DOL was common to the trade.

By way of reply to this, the opponent's evidence goes to the number of marks actually in use.  The opponent's evidence is a statutory declaration which exhibits an issue of the MIMS Bi-Monthly for December 1991 to January 1992.  The exhibit is asserted by the declarant, a technical assistant with the opponent's patent attorneys, to be such that it "would be expected to include any pharmaceutical product which is allowed by the Therapeutic Goods Administration to be and is marketed for human use in Australia".  The applicant impugns the credibility of the evidence, on the basis that there is no support for the assertion as to what the MIMS Bi-Monthly can be expected to contain.  As the applicant argues, without any indication of the competence of the declarant or of the means by which that declared belief was come to, the volume about which the assertions are made can carry only reduced weight. 

The MIMS Index is one which, from my own knowledge, deals with trade marks in use.  Were its contents and or its nature to be critical in what follows, I would have to seriously consider just how much weight I can give to what it shows and to what that in turn establishes.  However, let me take it as established, which it is not, that the MIMS Index is an authority on all or substantially all marks in use. 

I note the applicant's further point that the issue of MIMS on which the opponent relies does not relate to the marks in use at the precise application date.  It is that date which is, of course, the relevant date for determining the rights of the parties.  The MIMS Bi-Monthly in question deals with the situation some twelve months after the application was lodged but the applicant has not shown why there is any reason to expect the situation to have been significantly different at the earlier date.  I also accept that HALOPERIDOL DECANOATE was overlooked in the MIMS extracts introduced by the opponent.

Being these things as they may, the MIMS Index supports the contention that, of the relevant marks identified by the applicant, only seven were in use.  These were:  CHENDOL, MERSYNDOL, IRRADOL-A, HALOPERIDOL DECANOATE, HALDOL, LIPIDOL and PANADOL.  Another mark, MANDOL, is listed as one which is in use but not represented in the applicant's survey.  The investigation of the MIMS Bi-Monthly comes to the conclusion that the marks in the search relied on by the applicant amount only to about a quarter of one percent of the marks in use in Australia though, as the applicant argues, that does not devalue the fact that there are coexisting -DOL marks in the pharmaceutical industry.

The opponent's survey of marks in use does very much weaken the claim that the suffix -DOL is common to the trade.  The applicant has argued that the suffix is still common to the trade, in the sense that it is at least open to traders to use.  That is perhaps true, and I note that PANADOL and MERSYNDOL are both used for analgesics, and by different traders.  Equally, though, it must be said that there is not a great deal of evidence, judged on what is actually in use, to support the applicant's proposition.

All in all, however, it seems fairly clear to me that the suffix is used by other traders and is not in itself a particularly decisive factor in the comparison of the two marks at issue.  Given the prima facie case and the natures of the two marks, the opponent is under an onus to establish the contrary, to convince me that the element -DOL is one to which I should pay more than normal heed in comparing the marks.  In the alternative, the opponent having failed to discharge that onus, the marks should be compared as wholes, judged on their respective looks and sounds. 

Ms Parsons relied on analysis of the applicable principles set out in Gardenia Overseas Pte Ltd v The Garden Company Ltd (No 2), 1994 AIPC 91-096. She noted that, traditionally, it is said that the first syllable is of primary importance in comparing marks, and illustrated this with reference to London Lubricants, (1925) 42 RPC 264, Polipharm AG's application, 15 IPR 237 (ACTILAX and AGIOLAX compared, for pharmaceuticals) and Dermatone v Omnipharm 21 IPR 667 (DERMATONE and DERMASTINE compared, for skin creams etc). These cases, she argued, were concerned with marks that were not as close as those in Dow Chemical Co v Boehringer, 9 IPR 360 (PRIFANTIN and PERSANTIN, for pharmaceuticals). Ms Parsons argued that the established thrust of decisions of the courts and the Trade Marks Office required, therefore, that the opposition be dismissed.

I appreciate Mr Halford's caution that London Lubricants, supra, is not the universal guide to the pronunciation of invented words.  I allow also for the fact that invented words are not generally trade marks which leave a strong impression.  Thus, it may be that, to some minds, the syllables ZAN and PAN are, as Mr Halford argued, not overly memorable in their own rights.  To such people it is possible that the identity of the marks in question resides in some sort of muddled recall of the balance of the two marks.

Although I have made full allowance for the possibility of imperfect recollection of these two invented words and allowed for any of the ordinary ways these diverse goods may be bought and sold, it seems to me almost impossible for the ordinary buyer of any class 5 goods to confuse, or be misled by, the two marks PANADOL and ZANDOL.  They do not look particularly alike, they certainly do not sound alike and they do not give any impression that they denote the same trade source.  The first impressions of the marks on the eye or the ear will preclude, permanently, any risk of confusion.  It seems to me that only particularly careless or misguided people would manage to confuse the two marks.  I can appreciate the opponent's concern to eliminate any possibility of confusion in relation to the buying of medicines.  None the less, since only reasonable contingencies must be dealt with, it is going too far to say that the marks PANADOL and ZANDOL cannot coexist.

Accordingly, since I am satisfied that there will be no appreciable risk of deception or confusion of the two marks, I dismiss the opposition.  In the absence of any appeal from this decision I direct that the application proceed to registration.  I award costs, in accord with the scale, to the applicant.

T. Williams

Hearing Officer
8 June 1995