Stephen Hunter Pty Ltd v Sterling Winthrop Pty Ltd

This decision concerns an opposition by Sterling Winthrop Pty Ltd ("the opponent") to the registration of the trade mark ZANDOL in the name of Stephen Hunter Pty Ltd ("the applicant"). The application, lodged on 11 December 1990, sought registration for "pharmaceutical preparations and all goods in this class," a broad description encompassing medical and veterinary substances, pesticides, and herbicides. The opposition was based on two grounds: that the use of ZANDOL would be likely to deceive or cause confusion, and that the application was blocked by a prior registration for a deceptively similar trade mark.

The delegate of the Registrar of Trade Marks was required to determine whether the trade mark ZANDOL was substantially identical with or deceptively similar to the opponent's registered trade mark PANADOL, considering the relevant provisions of the *Trade Marks Act 1955*, specifically sections 33 and 28. This involved assessing the closeness of the marks, the nature of the goods, the circumstances of trade, and the potential for deception or confusion among consumers. The delegate also considered the commonality of the suffix "-DOL" in trade marks within class 5.

In reaching a decision, the delegate applied the principles established in *Pianotist Co's Appn*, requiring an assessment of the marks by their look and sound, the goods to which they apply, the likely customers, and all surrounding circumstances, including what is likely to happen if each mark is used normally. While acknowledging the opponent's extensive reputation in PANADOL for analgesics, the delegate found that the marks PANADOL and ZANDOL were not deceptively similar. The delegate noted that the suffix "-DOL" was common to the trade, with numerous marks in class 5 ending in this suffix, and that evidence suggested only a limited number of these were in actual use. Ultimately, the delegate concluded that the differences in the look and sound of the two marks were sufficient to preclude any appreciable risk of deception or confusion for the ordinary buyer of class 5 goods, even allowing for imperfect recollection and varying levels of consumer care.

Consequently, the delegate dismissed the opposition in its entirety. The application for the trade mark ZANDOL was directed to proceed to registration, and costs were awarded to the applicant.