Symbion Pty Ltd

[2015] ATMO 86

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1610191(3,5,32) - HYDRAPLUS- in the name of Symbion Pty Ltd.

Delegate:

Cristy Condon

Representation:

Applicant: Written submissions from Corrs Chambers Westgarth

Decision:

2015 ATMO 86

Ex parte application to be heard under section 33(4) of the Trade Marks Act 1995 – s44 considered - trade mark will proceed to acceptance

Background

1. The following is an ex parte proceeding in relation to Australian trade mark application 1610191.

2. Symbion Pty Ltd (‘the Applicant’) filed the application on 7 March 2014 in classes 3, 5 and 32 for the following trade mark and statement of goods:

Trade Mark:      HYDRAPLUS (‘the Trade Mark’)

Specification of goods:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps including liquid soaps and body washes; perfumery; essential oils; cosmetics; cosmetic preparations for skin, nail and hair; hair lotions; dentifrices; sun-tanning preparations, sunless tanning preparations, after sun preparations and lip balms in this class; dental care preparations (non-medicated); products for dental care and hygiene (non-medicated); deodorants; hair treatment compositions including shampoos and conditioners; protective creams (non-medicated); preparations for personal hygiene (non-medicated); skin, nail and hair care preparations; animal care products (other than for veterinary use)

Class 5: Pharmaceutical and veterinary preparations and substances; sanitary preparations for medical purposes; pharmaceutical preparations for health care; vitamins and vitamin preparations; multi-vitamin drinks; electrolyte preparations; electrolyte replacement beverages for medical purposes; dietetic food and substances adapted for medical use or veterinary use; dietetic preparations; dietary supplements for humans and animals; food additives and supplements; natural health foods and herbal remedy products in this class; pharmaceutical compositions containing vegetable extracts; minerals; food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; antiseptics; protective creams; preparations for destroying vermin; fungicides; herbicides; sun-blocking and skin protection lotions; sun-screen products in this class; chemical products for dental purposes; materials for dental treatment; medicines for dental purposes; medicated products for dental care and hygiene; nutritional supplements; medicated nutritional supplements; nutritional supplements including probiotic compositions; medical wound dressings; incontinence products; diarrhoea mixtures; skin care preparations including medicated skin care preparations; pharmaceutical preparations containing fish oil; fish oil for medical purposes; evening primrose oil for medical use; tonics (medicine); dietetic substances for medical use in weight control; preparations for personal hygiene (medicated); preparations for the care of nails (medicated); medicated hair care products; animal care products for veterinary use

Class 32: Non alcoholic beverages; electrolyte replacement beverages for general and sports purposes

1. The Trade Mark was examined as mandated by section 31 of the Trade Marks Act1995 (‘the Act’).

1. In the first report the examiner identified a ground for rejection under section 44 of the Act and decided to cite registered trade mark no. 1383500 HYDRA (‘the cited trade mark’). Over the course of five examination reports (during which the Applicant proposed an amendment to its class 5 specification) the examiner maintained the ground for rejection.

1. There being an impasse, on 20 May 2015 the Applicant requested to be heard by way of written submissions only.  I have been delegated to decide this matter based on the Applicant’s written submissions.  No evidence has been filed either during examination or before the hearing.  Put simply: the Applicant disagreed (as I do) with the examiner that the suggested amendment to the Applicant’s goods contains goods of the same description as the goods in the specification of the cited trade mark.

Discussion

1. Section 44 of the Act relevantly provides:

44Identical 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.

Note 1:For deceptively similar see section 10.

Note 2:For similar goods see subsection 14(1).

Note 3:For priority date see section 12.

Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

1. The details of the cited trade mark are as follows:

   Trade Mark No: 1383500

   Trade Mark: HYDRA

   Owner: Reckitt & Coleman (Overseas) Limited

   Convention Priority date: 12 February 2010

   Specification of Goods

   Class 5: Pharmaceutical preparations and substances; medicated confectionery; all of the foregoing for the relief and treatment of sore throats and mouth and throat infections; none of the aforementioned goods containing or being food supplements or dietary supplements

2. I note firstly that the cited trade mark has an earlier priority date than the Trade Mark.  Secondly, the Applicant’s class 5 goods are very broad and include (et al) pharmaceutical, nutritional and herbal substances.  These goods are the same goods as those protected by the cited trade mark.  Thirdly, the cited trade mark has been wholly consumed by the Applicant’s trade mark. I note that the Applicant’s trade mark includes the elements ‘hydra’ and ‘plus’ which form the blended word HYDRAPLUS. However from an aural standpoint I find no other way to express this blended word other than to pronounce it ‘hydra-plus’.  The element ‘plus’ indicates an additional ingredient/s or a higher quality product than other goods in the same product line.  As Luxmoore LJ said in Aristoc Ltd v Rysta Ltd[1] regarding pronunciation of a word trade mark:

   It is the person who only knows the one word, and has perhaps an imperfect recollection of it, who is likely to be deceived or confused.

   [1] Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87 (at 108).

3. I decide that a section 44 ground for rejection applies. The cited trade mark HYDRA and the Applicant’s trade mark HYDRAPLUS are deceptively similar.

1. As the Applicant has not provided me with any evidence as to the exceptions under section 44 (s44(3) or s44(4)), the Applicant’s class 5 goods would need to be drastically amended to no longer include goods of the same description as the goods in the specification of the cited trade mark.

1. The Applicant’s submissions in these proceedings are twofold.  Firstly, that the Applicant’s goods (once amended as suggested) are not the same description as the goods in the specification of the cited trade mark.  Secondly, that the cited trade mark has a low degree of inherent distinctiveness.  I disagree with the Applicant in relation to its latter line of argument as the goods in the specification of the cited trade mark are limited to pharmaceutical preparations and substances; medicated confectionery all being for the relief of a sore throat. I am satisfied that a potential consumer would neither assume HYDRA to indicate that the cited trade marks specification of goods had to be taken with water or that the goods had a hydrating or hydraulic effect. That being said I summarily dismiss the Applicant’s submission that the cited trade mark has a low level of inherent capacity to distinguish.

2. Therefore, I will now respond to the only question in these proceedings, being: whether the proposed amendment to the Applicant’s class 5 specification will mean that the Applicant’s goods are no longer of the same description as the goods in the specification of the cited trade mark. 

1. The Applicant’s  suggested amendment to its class 5 claim is as follows (my emphasis):

   Class 5: Vitamins and vitamin preparations; multivitamin drinks; electrolyte preparations; electrolyte replacement beverages for medical purposes, all the foregoing being for the treatment of dehydration. (‘the amended goods’)

2. Thus the question before me is (my emphasis): Whether the cited trade mark’s pharmaceutical preparations and substances; medicated confectionery; all of the foregoing for the relief and treatment of sore throats and mouth and throat infections; none of the aforementioned goods containing or being food supplements or dietary supplements; are goods of the same description as the Applicant’s: vitamins and vitamin preparations; multivitamin drinks; electrolyte preparations; electrolyte replacement beverages for medical purposes, all the foregoing being for the treatment of dehydration.

1. In order to find the answer to this question I will focus first on the legislation and case law and follow with a summary of the Applicant’s submissions. Section 14 of the Act provides:

Section 14

Definition of similar goods and similar services(1) For the purposes of this Act, goods are similar to other goods:

(a) if they are the same as the other goods; or

(b) if they are of the same description as that of the other goods.

(2) For the purposes of this Act, services are similar to other services:

(a) if they are the same as the other services; or

(b) if they are of the same description as that of the other services

1. The case law also provides well established guidance for the concept of goods of the same description.  In Jellinek's Application (“Panda”)[2], Romer J. espoused that the concept could be ascertained by an assessment of the goods in terms of their nature, use and trade channels.  Although, I note it is unlikely that a single factor would lead to a conclusive finding that the goods are of the same description.   More broadly, the factors set out by Romer J would include such things as[3]:

   ·     the nature and characteristics of the goods;

   ·     the origin of the goods;

   ·     the purpose of the goods;

   ·     whether the goods are usually produced by one and the same manufacturer;

   ·     whether the goods are distributed by the same wholesale houses;

   ·     whether the goods are sold in the same shops and to the same class or classes of customer;

   ·     whether those engaged in the manufacture and distribution of the goods are regarded as belonging to the same trade.

   [2] (1946) 1A IPR 393; 63 RPC 59

   [3] Beck, Koller & Company's Application (“Plio”), 64 RPC 76 at page 78; later confirmed by John Crowther & Sons (Milnsbridge) Ltd's Appln (1948) 65 RPC 369 at 372

2. Concerning the Applicant’s written submissions, at p [9] the Applicant mentions Solarhart Industries Pty Ltd v Solar Shop Pty Ltd[4] and submits that in that matter ‘Perram J acknowledged (albeit in the infringement context) the inherent elasticity of the concept of “goods of the same description”, noting that “[i]n almost all cases it will be possible to locate a description or genus in respect of which both sets of goods may be seen as members”.’

   [4] [2011] FCA 700 at 31

1. However, I consider that his honours comment was not a general comment but rather was made in the context of a consideration of particular goods. In that same case, the sentence immediately preceding that comment says: “Both products can be described as roof mounted devices for collecting energy from the sun and, in that sense, they are goods bearing the same description. On the other hand one is a hot water heater and the other an electricity generator and, in that sense, they are not.”[5]

   [5] ibid

1. Further, again at p [9] of the submissions the Applicant submits that any decision concerning goods of the same description should demonstrably be a ‘sensible business judgement’.[6]

   [6] In the matter of the Australian Wine Importers Trade Mark [1889] 6 RPC 311 at 318 per Lindley J

1. For the purpose of highlighting the state of Trade Marks Register the Applicant also brings to my attention trade marks in class 5 with the prefix HYDRA, such as trade mark registration nos. 1049697: HYDRALYTE and 1122723: HYDRAMAX both registered for electrolyte products, and trade mark 1587372 HYDRASALT (currently in a status of lapsed-accepted) which claimed medicinal salts.  I find that the existence of these earlier trade marks is of limited relevance in these proceedings. I am not, in any event, bound to follow the state of the Register.

1. However, as is the case the amended goods I have for consideration in this matter are far more removed from the goods of the specification of the cited trade mark than others that fall in the same class. The relevant goods in this matter are in my opinion, far less likely to fall within one manufacturer’s product line.

1. I consider that the trade channels of the respective goods are the same and that the nature of the goods is similar.  The goods are all types of medication or holistic preparations and/or substances that would be sourced quickly not just from pharmacies but also from supermarket shelves.  They may not be carefully considered like the purchase of a more expensive good.  Nor is the prospective purchaser guided by the need for a prescription.  However, when I apply a sensible business judgement to this matter I decide that these goods have completely different purposes.  One set of goods is for the treatment of dehydration, the other is for the relief of sore throats and for throat and mouth infections.

1. I think it is unlikely that someone suffering from dehydration would seek out a product for the relief and treatment of a sore throat or vice versa. Even in the event that a consumer did seek both types of preparation at different times it is commonplace for traders to adopt the prefix HYDRA to indicate that their own goods are designed to hydrate.  That is, to replace lost fluids and or electrolytes. I find that a consumer who saw HYDRAPLUS on a hydration preparation would be unlikely to conclude that HYDRA branded goods for sore throat relief or throat or mouth infections originated from the same trader.

1. I am satisfied that the Applicant’s proposed amendment to class 5 results in a description of goods that no longer contains goods of the same description as those in the class 5 specification of the cited trade mark.  A mere possibility of deception or confusion is not a sufficient basis to reject the trade mark application.[7] I am satisfied that there is not.

[7] Southern Cross Refrigeration Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at pp594-5

Decision

1. I will therefore action the Applicant’s proposed amendment and I accept the Trade Mark for possible registration with the following statement of goods:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps including liquid soaps and body washes; perfumery; essential oils; cosmetics; cosmetic preparations for skin, nail and hair; hair lotions; dentifrices; sun-tanning preparations, sunless tanning preparations, after sun preparations and lip balms in this class; dental care preparations (non-medicated); products for dental care and hygiene (non-medicated); deodorants; hair treatment compositions including shampoos and conditioners; protective creams (non-medicated); preparations for personal hygiene (non-medicated); skin, nail and hair care preparations; animal care products (other than for veterinary use)

Class 5: Vitamins and vitamin preparations; multivitamin drinks; electrolyte preparations; electrolyte replacement beverages for medical purposes, all the foregoing being for the treatment of dehydration.

Class 32: Non alcoholic beverages; electrolyte replacement beverages for general and sports purpose

Cristy Condon

Hearings Officer

Trade Marks Hearings & Opposition

16 September 2015