Takeda GmbH v Actegy Limited
[2014] ATMO 38
•7 May 2014
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by TAKEDA GmbH to registration of trade mark application 1475535 (3, 5, 9, 10, 25) - REVITIVE - filed in the name of ACTEGY LIMITED.
| Delegate: | Heath Wilson |
| Representation: | Opponent: Lena Balakrishnan and Marion Heathcote of Davies Collison Cave. Applicant: Anthony Norris of Collison & Co. |
| Decision: | 2014 ATMO 38 Opposition under section 52 of the Trade Marks Act 1995 – Sections 44 and 59 pressed – section 44 established for classes 3 and 5 – costs awarded against the Applicant. |
Background
This is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) in relation to a trade mark application, the current details of which are set out below:
Trade Mark No. 1475535
Trade Mark: REVITIVE (‘the Trade Mark’)
Filing Date: 20 Feb 2012
Applicant: Actegy Limited (‘the Applicant’)
Specification of Goods:
Class 3: Creams, lotions, moisturising lotions; essential oils, cosmetics; all of the aforesaid goods for use on the feet, legs or hands; creams intended to reduce visible spider veins, creams intended to reduce burst blood vessels; lotions and gels to soothe aching limbs; cooling leg gel
Class 5: Pharmaceutical preparations for the treatment of legs; pharmaceutical preparations to maintain healthy limbs; creams intended to reduce visible spider veins, creams intended to reduce burst blood vessels; pharmaceutical products in gel form to treat leg ache; dietetic preparations for treating aching limbs; dietetic preparations to promote blood circulation; food additives for treating aching limbs; food additives for promoting blood circulation; mineral and vitamin preparations for treating aching limbs; mineral and vitamin preparations for promoting blood circulation; pharmaceutical products in gel form for promoting blood circulation; pharmaceutical products in gel form for treating aching limbs; dietetic substances and food additives for non-medical use
Class 9: Downloadable instructional materials for electronic apparatus for the promotion of leg health and for medical stimulators
Class 10: Medical and therapeutic goods; transcutaneous nerve stimulation devices; cardiac stimulation devices; electrical nerve stimulation devices; socks for therapeutic and medical purposes; apparatus for electrical muscle stimulation; apparatus for the electrical stimulation of groups of muscles; contact apparatus for deriving electrical signals from human bodies; electrical apparatus for medical purposes for applying therapeutic stimulation to the body; electrical apparatus for medical treatment; electrical appliances for medical purposes; micro electrical therapeutic apparatus; electronic apparatus for the promotion of leg health; medical stimulators; accessories, parts and fittings for all the aforesaid goods allowed in this class; body massagers; electronic body massagers; foot massagers; electronic foot massagers; hosiery for medical, surgical and/or prophylactic purposes; medical and surgical socks or gloves; graduated compression garments; graduated compression hosiery; compression garments; compression hosiery; compression panty hose; compression stockings; gloves for electrical muscle stimulation; electronic devices used for relaxation; electronic devices for the treatment of vascular disease and oedema
Class 25: Clothing; footwear; stockings; tights; socks; glovesThe Trade Mark was examined under section 31 of the Act and advertised as accepted for possible registration on 28 June 2012 in the Australian Official Journal of Trade Marks. On 28 September 2012 a notice of opposition was filed by Nycomed GmbH nominating most of the grounds of opposition available under the Act.
Nycomed GmbH subsequently changed its name to Takeda GmbH (now ‘the Opponent’). The evidence stages followed and the only evidence filed in this matter comprised the statutory declaration of Katherine Louise Kemp (trade mark searcher) dated 27 June 2013 (with exhibits KK-1 to KK-3). That declaration formed the entirety of the Opponent’s evidence in support.
The opposition to the Trade Mark was set down for a hearing. Prior to the hearing however, and in accordance with my directions, the Opponent supplied written submissions indicating that the grounds of opposition that were to be pressed at the hearing were sections 44 and 59 of the Act. The Applicant provided written submissions in response. I find that the remaining grounds of opposition nominated in the notice of opposition have been abandoned. However, those grounds of opposition (and others allowed under the Act) will be available to the Opponent should this decision be appealed.
As a delegate of the Registrar of Trade Marks I heard the opposition on 4 April 2014 in Canberra. The Applicant was represented in person by Anthony Norris of Collison & Co and the Opponent was represented via teleconference by Lena Balakrishnan and Marion Heathcote of Davies Collison Cave.
Onus
The Opponent bears the onus of establishing one of the grounds stated in the notice of opposition on the balance of probabilities.[1]
[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 at [22] to [26] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; DC Comics v Cheqout Pty Ltd [2013] FCA 478; (2013) 101 IPR 334 at [13].
Reasons
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.
As the provisions above make clear, section 44 is concerned with any earlier filed trade marks that are substantially identical with or deceptively similar to the Trade Mark and are in respect of similar goods or closely related services.
The Opponent is relying on its earlier trade mark registration no. 1314667: REVESTIVE (IR No. 1007640) in Class 5 for Pharmaceutical preparations.
Ms Balakrishnan argued that the Applicant’s goods in classes 3, 5 and 10 are the same or of the same description[2] as the Opponent’s ‘pharmaceutical preparations’. I will mention that during the opposition process, the Applicant did make amendments to the specification of goods in class 5 purportedly to remove an obvious overlap with the goods. Despite those amendments, I agree with the Opponent that the respective goods in class 5 remain similar due to the fact that the Applicant’s particular pharmaceutical or dietetic preparations are encompassed under the Opponent’s broad specification of goods. The Applicant’s designated goods in class 3 and 10, however, require closer analysis.
[2] As per the definition of ‘similar goods’ in section 14 of the Act.
The Assistant Comptroller in Re an Application by John Crowther & Sons (Milnsbridge) Ltd[3] summarised the main considerations for the similarity of goods:
`In the case of Jellinek's Application (1946) 1A IPR 393; 63 RPC 59, Romer J. classified these various factors under three heads, viz, the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself'
[3] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 (at 372).
Lord Evershed MR said in Re J Lyons & Co Ltd's Application[4]:
In all cases of this kind regard will be had to such matters as the nature and composition of the goods, to their respective uses and functions, and to the trade channels through which respectively they are marketed or sold; and in different cases ... one (but not always the same one) of these characteristics may have greater significance or emphasis than the others. The matter falls to be judged ... `in a business sense';…
[4] Re J Lyons & Co Ltd's Application [1959] RPC 120 at 128
Addressing the class 3 goods first, I am satisfied that cosmetic creams and lotions which are not pharmaceutical preparations are nonetheless similar to pharmaceutical preparations in the form of creams and lotions. The similarities in the nature of those goods, the trade channels through which they are sold (pharmacies, clinics etc.) and their respective uses (e.g. improving the appearance of the skin) leads me to the conclusion that they are similar. In addition, major cosmetics companies go to great lengths to create the impression that their products have pharmaceutical benefits or properties. From the perspective of the average consumer I believe that there is an overlap in the Australian marketplace for the goods in class 3.
In relation to the goods in class 10 of the Trade Mark, I am to consider the similarity of pharmaceutical preparations to medical and therapeutic devices/apparatus. The Opponent’s main argument was that certain large pharmaceutical companies manufacture both medical equipment and pharmaceutical preparations, and as a result the products of those large companies may be sold alongside each other in a store. Ms Balakrishnan further argued that medical equipment and medical preparations may be used in conjunction with each other in (for example) a hospital environment.
I find neither of those arguments to be particularly convincing. Goods are not necessarily of the same description simply because they can conceivably be used in close association with each other[5]. Neither is the fact that large companies may manufacture both products determinative of a finding that such goods are of the same description. It would be a relevant factor if it were demonstrated that the goods are usually produced by one and the same manufacturer.[6] On the evidence before me, I am not satisfied in that regard. In the end, the nature and purpose of the goods differ and I find that these goods in class 10 and 5 are not similar.
[5] See "Atlas" Trade mark [1979] RPC 59
[6] Re an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369 (at 372).
‘Substantially Identical/Deceptively Similar’
While there is no definition of ‘substantially identical’ within the Act, the comments of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[7] set out the relevant test for comparison:
[the trade marks] should, I think, 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.
[7] Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415.
I find that, on a side by side comparison, the trade marks are not substantially identical as they contain certain visual and aural differences (which I will detail later in this decision). I must then consider the question of whether they are deceptively similar. Section 10 of the Act indicates that a trade mark is taken to be deceptively similar to another if it so nearly resembles that trade mark that it is likely to deceive or cause confusion. Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd[8] detailed the relevant assessment:
[T]he marks ought not … to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.
[8] Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658)
The first point to note on the visual comparison is that the trade marks both have an identical prefix ‘REV’ and the identical suffix ‘TIVE’. An identical prefix is a factor that has particular significance in the ordinary recollection of trade marks by the consumer.[9] The identical suffix (being commonplace for this industry) and the similar length of the trade marks are of less importance than the identical prefix but are nevertheless additional factors that would be likely to be recalled.
[9] See In the Matter of London Lubricants (1920) Limited's Application to Register a Trade Mark (1925) 42 RPC 264 at 279.
During the hearing both Ms Balakrishnan and Mr Norris drew my attention to various decisions from delegates of the Registrar of Trade Marks which considered arguably similar issues. For the Opponent, these included Glaxo Wellcome (Aust) Ltd v Bukwang Pharm Co Ltd [2008] ATMO 12; [2008] AIPC 92-282 (‘REBOVIR’ and ‘REVOVIR’ found to be deceptively similar to ‘RETROVIR’ in relation to pharmaceutical preparations) and Intervet International BV v Randlab Australia Pty Ltd (2010) 88 IPR 391 (‘REGUMATE’ and ‘REG-U-LATE’ determined as deceptively similar trade marks in relation to veterinary preparations).
For the Applicant, reference was made to other decisions from delegates of the Registrar including Matthias Rath v Biofarma [2004] ATMO 55 (‘DIASTOR’ and ‘DIACOR’ not deceptively similar in relation to pharmaceutical preparations); Merck KGaA v Advanced Intellectual Holdings Pty Ltd [2011] ATMO 79 (‘TIRON’ and ‘TIMIRON’ not deceptively similar).
If anything analogous to the current matter can be gleaned from a general overview of the above decisions it is that simply having an identical prefix and suffix does not necessarily lead to a finding of deceptive similarity. In case it needs to be reiterated: each case is decided on its own merits and according to its factual circumstances. The consideration essentially reduces to whether the trade marks with those particular identical features still look and sound sufficiently alike and whether the differing element in either trade mark serves to distinguish them in terms of meaning when viewed in the context of the relevant goods or services. Ultimately,:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[10]
[10] Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D).
Both parties made much at the hearing of the aural pronunciation of the other party’s trade mark. Notwithstanding the dispute over pronunciation, I find that the most likely pronunciation (for an average consumer of these goods) of the prefix ‘REV’ in both trade marks would be the same. In addition, and despite the submissions of Mr Norris, I find that the suffix ‘tive’ in either trade mark would also be pronounced in an identical way. I am not convinced that the letters ‘ES’ in the middle of the Opponent’s trade mark alters the sound of the suffix (-‘tive’). I accept that there is a difference in sound at the midpoint of the trade marks, however, that difference is overwhelmed by the other abovementioned visual and aural similarities. I also refer to the comments of Luxmoore LJ inRystaLtd’s Application[11]:
The answer to the question whether the sound of one word resembles too nearly the sound of another so as bring the former within the limits of s 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. 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. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person’s wants. [Emphasis added]
[11] RystaLtd’s Application (1943) 60 RPC 87 (at 108-109).
In terms of any meaning or connotation within the trade marks I note that both trade marks are invented words. It could be argued (and it was by the Applicant) that REVITIVE has connotations with the word ‘revitalize’ and that REVESTIVE is a possible allusion to the word ‘restive’. In the unlikely event that these inferences would be evident to the consumer on first inspection they would still not form a basis for the recollection that is carried away and retained by the consumer. If those connotations were noticed, it would primarily affect the pronunciation of the respective trade marks. To go further on this point would be to embark on a search for meaning at odds with the legal principles governing deceptive similarity.
Finally, I have made allowance for the fact that consumers would pay more attention to the purchase of certain pharmaceutical preparations. The same could not necessarily be said for some of the Applicant’s goods, such as moisturizing creams and lotions. Due to the broad specifications of goods in both trade marks, I must consider consumers who order the goods over the counter and those who select them from a shelf in a pharmacy or even in a supermarket. The fact that more careful inspection may be carried out by certain consumers for certain goods within the specification does not affect, from a notional use perspective[12], the confusion that is likely to occur from other consumers selecting, in a cursory or hurried manner, the other goods encompassed within the broad specifications.
[12] See Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020 at [50]
Taking all the above factors into the assessment of judging the respective wholes of the two trade marks I find that there is a real and tangible danger that Australian consumers would imperfectly recall the Opponent’s trade mark and be deceived or confused as a result on encountering the Applicant’s goods bearing the Trade Mark. The Applicant has not supplied any evidence that may have assisted the Trade Mark to proceed to registration under the section 44 exceptions of prior use, honest concurrent use or other circumstances. I therefore find that the ground of opposition under section 44 has been established.
Section 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.
Note: For applicant see section 6.
At the hearing Ms Balakrishnan set out relevant legal principles for the ground of opposition under section 59 of the Act, and argued that as the Applicant had not filed any evidence or engaged in correspondence with the Opponent, the onus had shifted to the Applicant to demonstrate its intention to use the Trade Mark as at the time of filing.
It has been long accepted that a prima facie intention to use a trade mark arises from the act of filing a trade mark application.[13] ‘Slight’ evidence may be sufficient to shift the onus to the Applicant to demonstrate an intention.[14] However, to be clear, there must be some evidence to support a bald allegation of a lack of intention to use. In the current matter, I am not satisfied (for a number of reasons) that the onus has shifted to the Applicant to establish an intention to use the Trade Mark.
[13] Aston v Harlee Manufacturing Co [1960] HCA 47; (1963) 103 CLR 391 at 401 per Fullagar J.
[14] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 51; (1967) 116 CLR 254.
Firstly, absence of the requisite intention to use a trade mark cannot be inferred from lack of use alone.[15] Secondly, I note that most available grounds of opposition had originally been nominated in the notice of opposition and none of the evidence from the Opponent goes to the intention of the Applicant at the time of filing. As a result, it is not surprising that there is no evidence from the Applicant on this particular ground. The Applicant was only aware that section 59 would be pursued by the Opponent approximately two weeks before the hearing (via the Opponent’s written submissions).
[15] See Suyen Corporation v Americana International Limited [2010] FCA 638 (21 June 2010) at [207].
Thirdly, the intention to use a trade mark is assessed as at the time of filing the Trade Mark.[16] As a result, the fact that there is lack of subsequent correspondence from the Applicant or filing of evidence in answer has little relevance. If later events did come into consideration here, the personal appearance of Mr Norris on the Applicant’s behalf at the hearing would surely also inform the issue.
[16] Food Channel Network Pty Ltd v Television Food Network GP (2010) 86 IPR 437; Suyen Corporation v Americana International Limited (2010) 87 IPR 262.
Finally, the Opponent bears the onus of pointing to the evidence that would serve to shift the onus to the Applicant to demonstrate it had the requisite intention. The Opponent cannot accomplish this task by simply querying the intention of the Applicant in its submissions for the hearing of the opposition. Accordingly, the onus has not shifted to the Applicant in this matter.
The ground of opposition under section 59 of the Act has not been established.
Decision
55Decision
(1)Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
(2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.
Note:For examine and this Act see section 6.
Section 55 of the Act allows the Registrar to refuse to register a trade mark having regard to the extent to which a ground of opposition (such as section 44) has been established. I am satisfied that the opposition has been established, under section 44, but only in respect of the designated goods in classes 3 and 5.
At this point the opposition proceedings have not been discontinued or dismissed. Section 55 further makes it clear that “at the end” the Registrar must decide the matter in the manner set out under s55(1).
Therefore, I am allowing the Applicant fourteen (14) days from the date of this decision in which to request that its application be amended by deleting classes 3 and 5 and to send a copy of its request to the Opponent. If it does so request (and in the absence of an appeal) the amended application may be registered under section 55(1)(b) of the Act. If it does not, I will refuse registration under section 55(1)(a).
As this decision may be appealed, the amendment (if requested) will not be carried out until the period allowed for filing an appeal at the relevant court and notifying the Registrar of such, has expired. If there is an appeal, and it is not discontinued, I direct that the disposition of the application be in accordance with the court’s order or direction.
Costs
Regardless of whether or not the amendment to the specification of goods is made, the Opponent has been successful in opposing the registration of the Trade Mark. In matters such as this, costs follow the event. I therefore award costs against the Applicant in accordance with Schedule 9 of the Trade Marks Regulations 1995.
Heath Wilson
Hearings Officer
Trade Marks Hearings & Opposition
7 May 2014
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