Swisse Vitamins Pty Ltd (Formerly Known as Swisse Natural Health Care Pty Ltd v Henry O Meissner

[2001] ATMO 49

TRADE MARKS ACT 1995

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

Re:Opposition by Swisse Vitamins Pty Ltd (formerly known as Swisse Natural Health Care Pty Ltd) to the registration of trade mark application number 739722 in the name of Henry O Meissner for a trade mark comprising the word HERBATONIN in Class 5.

Background
Application number 739722 was filed on 23 July 1997 in the name of Henry O Meissner (the applicant).  The application was for the registration of the word trade mark HERBATONIN and covered the statement of goods, "Pharmaceutical preparations; veterinary preparations; dietetic substances for medical use; food for babies; plasters; material for dressings," in Class 5.

Following examination, the trade mark was advertised as accepted in the Australian Official Journal of Trade Marks of 4 February 1999.  On 22 March 1999, Swisse Vitamins Pty Ltd (the opponent), in its then name, Swisse Natural Health Care Pty Ltd, filed notice of opposition to the trade mark’s registration.  Evidence in support of the opposition and the ensuing evidence in answer were duly served and filed by the respective parties.  Neither party requested a hearing to determine the opposition and in due course, the Registrar delegated the matter to me to decide on the written record.  Neither side made written submissions for my consideration but relied instead upon their respective evidence.

The notice of opposition listed a wide range of grounds.  However, the only matter to which the opponent's evidence in support appeared to be directed was that under s.44 of the Act, that the subject mark is substantially identical with or deceptively similar to the opponent's trade mark, which is registered for similar goods to those included in the specification of this application.  Additionally, part of the applicant's evidence in answer appears relevant to the ground under s.59, that there must be an intention to use the trade mark in Australia, in relation to all of the goods included in the specification.

Accordingly, I cannot find that a prima facie case has been established for the applicant to answer on any grounds other than those under ss.44 and 59.  Thus, I find that those other opposition grounds are unsuccessful.

The Evidence
The evidence in support comprises a declaration by Brian Hendy, a patent attorney of the opponent's then legal representatives, Carter Smith & Beadle. Mr Hendy declares as to the details of the application and the opposition, and attaches, as exhibits, copies of documents from the Official file, presumably obtained under the Freedom of Information Act. He also gives some information regarding the opponent, its products and its registered trade marks.

Completing the evidence in support is a declaration by Michael Saba, the opponent's managing director.  He gives an account of the history of the opponent company and its activities.  He also details the exchange of correspondence between the applicant and the opponent, and attaches copies of these letters as exhibits.  He gives some information on industry packaging practices, and also his opinion regarding the possibility of the deception and confusion which might ensue if the present trade mark is registered in the face of his company's previously registered trade mark for the word HERBATO.

The evidence in answer comprises a single declaration by the applicant, Henry Ostrowski-Meissner.  In his declaration, Mr Meissner gives a history of the present application and the searches of the Register which he made in relation to it.  He says that he was aware of the opponent's trade mark before he applied for registration, and he describes how his product of interest was developed and how he coined the present trade mark.  He gives details of the companies to whom samples have been distributed of the product branded with the applied-for trade mark.  He also opines that he does not believe that deception or confusion would ensue from the use of the subject trade mark because it and the opponent's mark "differ in a message they convey to the public".  He also says that the length and presentation of the respective marks are substantially different.  Mr Meissner also declares that he does not intend to apply his trade mark to certain products that are the same as goods included in the specification of the opponent's registered trade mark.

Analysis
Section 44
The relevant part of s.44 reads as follows:
44 Identical etc. trade marks

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.

The opponent's trade mark is registration number 729014, for the word trade mark HERBATO which has been registered since 3 March 1997 - before the priority date of the present application - for the following goods:

Pharmaceutical preparations; dietetic substances for medicinal use; analgesics; balms for medicinal purposes; therapeutic preparations for the bath; biocides; capsules for pharmaceutic purposes; medicinal drinks including teas, particularly herbal teas; medicinal herbs; vitamins, vitamin preparations, mineral supplements and nutritive elements.

In the case of Registrar of Trade Marks v Woolworths Limited 45 IPR 411 (the Woolworths Metro case) at 425, French J said that:

The logic of s.44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

This would also seem to apply where the competing marks both cover goods - as in the present instance.  There is no doubt that at least some of the goods of both parties here are similar.  Both specifications contain the descriptions, 'pharmaceutical preparations' and 'dietetic substances for medicinal use'.  Given this, the sole issue for me to decide here is whether the marks are substantially identical with, or deceptively similar to each other.

In Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8 the test was posited:

Assuming a use by the proprietor of each of the cited trade marks in a normal and fair manner in respect of any of the goods and services covered by those registrations, is the court satisfied that there will be no reasonable likelihood of deception and confusion amongst a substantial number of persons if the applicant for registration (the respondent to this application) also uses its mark normally and fairly in respect of services covered by the proposed registration.

However, as noted by French J in the Woolworths Metro case, at 426:

So far as this passage, reflected in oral submissions, suggests that an applicant must satisfy the Registrar or the Court that there will be no reasonable likelihood of deception and confusion it does not represent the law as it stands under the 1995 Act.  The position now is that the Registrar and the Court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

In deciding whether or not competing trade marks are substantially identical or deceptively similar in relation to each other, the tests are conveniently laid out in such cases as Australian Woollen Mills Ltd v F. S. Walton & Co Ltd (1937) 58 CLR 641 and in Shell v Esso, supra, where, in the latter case, Windeyer J said, at 414 and 415:

(In relation to determining substantial identity)...(the marks should) be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

(In relation to determining deceptively similarity)   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.

In relation to whether the two party's marks can be considered to be substantially identical, I think that, when the marks are looked at together, there are differences which immediately become apparent.  The subject mark is an allegedly invented, four syllable word, HERBATONIN.  On the other hand, the opponent's mark comprises the also apparently invented, but now three syllable word, HERBATO.  It is true that both of the trade marks share the first three syllables, but the suffix -NIN is missing in the applicant's mark.  Given the clear difference in spelling and pronunciation, which is evident from any comparison, I can only deduce that the respective marks are not substantially identical.  I will now move on to determine whether or not they are deceptively similar.

Section 10 of the Act defines a trade mark as being deceptively similar to another trade mark if it so nearly resembles that mark that it is likely to deceive or cause confusion.  Consideration should also be given to a normal person's impression based on a recollection of the opponent's mark.  In this regard, Luxmoore, L.J. expounded the test referred to as the doctrine of "imperfect recollection" in Rysta Ltd.'s Appn. (1943) 60 RPC 87. From the evidence, it is clear that the opponent is of the opinion that the effect or overall impression produced on customers' minds by both trade marks would be the same. The applicant obviously feels that the implied "message" in his own trade mark, together with the differences in spelling and appearance between it and the opponent's mark, means that there are enough differences to mean that very few people would be confused as to the respective origins of the marks in dispute.

As I have said, the opponent's trade mark and the subject mark both contain the word element HERBATO - which is, in fact, the entire of the opponent's trade mark.  However, in my opinion, the opponent's registration for the word does not automatically preclude other traders from using that word form as the basis of their own trade marks - so long as they are not so close that they cause deception or confusion.

I do concede that there may be some reference in people's minds, when confronted with both parties' marks, to the concept of herbs.  However, this allusion does not necessarily mean that they would see the two words as being deceptively similar.  The pharmaceutical trade does feature many marks incorporating such suggestions of including "herbal" ingredients.  Indeed, the Trade Marks Register includes dozens of examples of the word element HERB as part of trade marks in Class 5.  In the case of the opponent's trade mark, I think that a person encountering the word, HERBATO would see it as some kind of Italian or Spanish reference to a herb based product.  However, in relation to the applicant's trade mark HERBATONIN, I believe that a purchaser would firstly deduce a meaning of herb-based pharmaceutical preparations.  The suffix -TONIN appears, from the Register and also from my own knowledge, to be a commonly-used word element in the trade when referring to such goods.

Mr Saba, in his declaration included in the opponent's evidence, did put forward the possibility that containers bearing the respective marks could be misaligned on shelves, resulting in the public being deceived.  However, I think that such goods would not be purchased without further inspection by the buyer and some consideration of the contents after reading the labels fully.  Further, I think it is significant to note at this point that there was no evidence placed before me which showed any instances of past confusion, in relation to the respective marks.

Given all of the above, I am not "reasonably satisfied" - as per the test in the Woolworths Metro case, supra - that a significant number of customers, who already had a knowledge of the opponent's registration, would be deceived or confused when confronted with the applicant's trade mark used in a normal and fair manner on the goods listed in the application.  In view of this, I cannot agree that the applicant's trade mark is substantially identical with, or deceptively similar to, the mark already registered by the opponent.  Accordingly, I find the opponent is not successful under this ground of its opposition.

Section 59
This section reads:

59. Applicant not intending to use trade mark

The registration of a trade mark may be opposed on the ground that the applicant does not intend:

(a) to use, or authorise the use of, the trade mark in Australia; or

(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services specified in the application.

Mr Meissner has declared, at paragraph 6 of his declaration, that he does not intend to use his trade mark on particular goods, viz. "herbal teas, medicinal herbs, vitamin(s), vitamin preparations, mineral supplements".  The present application would therefore appear to offend the provisions of s.59, given that some of these goods could conceivably be incorporated in the wider descriptions, "Pharmaceutical preparations...and...dietetic substances for medical use".  However, I believe that this situation could be obviated by the deletion of the former items - which also appear to be goods of interest to the opponent.

I find, therefore, that despite offending the provisions of s.59, if the applicant agrees to amend the present statement of goods to exclude those goods, then this ground can be overcome.

Conclusion
I have found, as the Registrar's delegate, that the opponent has not been successful on the s.44 ground relied upon.  However, it is the case that, through the applicant's own admission, the s.59 ground has been shown to be valid.  Despite this, I find that if the applicant requests, in writing, to delete the goods "herbal teas, medicinal herbs, vitamins, vitamin preparations and mineral supplements" from the specification, I will allow the application to proceed to acceptance.

Accordingly, I allow the applicant 21 days from the date of this decision to request the Registrar to carry out the amendment.  If the applicant complies with this condition, I direct that trade mark application number 739722 may proceed to registration, providing all of the appropriate fees have been paid.  If the applicant does not agree to amend the goods within the time allowed, I find that the opposition will have succeeded and the trade mark's registration will be refused.

Ian Forno
Hearing Officer

8 June 2001