The Boots Co PLC v Biovital Pty Ltd

[2007] ATMO 59

TRADE MARKS ACT 1995

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

Re:Opposition by The Boots Company PLC to registration of trade mark application 1032950(5) - NEO-FEN DOLOR - filed in the name of Biovital Pty. Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Trevor Stevens, solicitor, of Davies Collison Cave, patent attorneys Applicant: no appearance, no submissions
Decision:	2007 TMO 59 S 52 opposition: s 44 and 60 NEO-FEN DOLOR not deceptively similar to NUROFEN. Registration to proceed, costs awarded against opponent

Background

1. Biovital Pty Ltd (“the applicant”) has applied to register the trade mark NEO-FEN DOLOR in class 5 for “pharmaceutical preparations and substances”.  The application, number 1032950, has been examined by the Trade Marks Office and accepted for possible registration.

2. The Boots Company PLC (“Boots”) was registered as the owner of trade mark 379824, NUROFEN, for goods listed in the same terms as the applicant’s[1].  Boots has opposed registration of the applicant’s trade mark.

   [1] Mr Stevens noted at the hearing that this registration has since been assigned to Reckitt & Colman (Overseas) Limited.  I agree with him that this makes no difference to the continuance by Boots of the opposition proceeding.

3. The opposition process has followed the course set out in the regulations, with both parties filing and serving evidence to support their respective positions.  At the end of that process I was assigned to hear and decide this matter under delegation from the Registrar of Trade Marks.

4. At the hearing, Mr Stevens, for Boots, argued for the existence of relevant grounds of opposition to registration, under sections 44 and 60 of the Trade Marks Act 1995.  Both provisions have, as a pivotal issue, the question of deceptive similarity between competing trade marks.  It can be seen, therefore, that the opposition may succeed or fail on that single issue.

   Section 44 considered

5. In terms of the relevant legislation, the priority date of the application is clearly not earlier than that of the registration cited by Boots.  The goods of the cited registration and the application are identical.  Therefore, Boots can establish a ground of opposition if, but only if, I am satisfied that its trade mark, NUROFEN, is deceptively similar to NEO-FEN DOLOR, the trade mark of the applicant.  The definition of deceptive similarity comes from s 10 and is as follows:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. With this issue in mind, Mr Stevens took me to the terms of Boots’ evidence.  This shows that DOLOR is recognised in pharmaceutical and neurological references as meaning pain, particularly pain in consequence of inflammation.  DOLOR is not a term in common usage by consumers, so far as I am aware, but the Macquarie Dictionary lists its meaning as “of sorrow or grief”.

7. Mr Stevens argued that consumers will be familiar with the normal pattern of usage for medicines, whereby a primary trade mark is followed by a secondary descriptor such as PLUS - one of the variants used by Boots with NUROFEN - or MAX or FORTE or similar[2].  I agree with Mr Stevens’ argument that the word DOLOR is at least suggestive or semi-descriptive, and likely to be recognised as such in the trade.  Beyond this, an ordinary consumer would not, he said, put particular weight on the presence or absence of the word DOLOR when used after a clearly stronger trade mark such as NEO-FEN. 

   [2] The evidence on this practice is not exhaustive, but arguably this is because the tendency of pharmaceutical manufacturers to do so is well-enough known in the first place. 

8. Mr Stevens was also strongly critical of the evidence relied on by the applicant, which simply illustrates that there are 66 trade marks in class 5 prefixed by the element NEO and a further 12 prefixed by NURO.  I agree entirely with Mr Stevens that this is not a matter that will be settled by a simple glance at the frequency or otherwise of the elements NEO and NURO. 

9. As Mr Stevens put it:  for purposes of assessing whether imperfect recollection is likely to occur, the following features of the words NUROFEN and NEO-FEN are likely to influence the recall or recollection of the respective words:

   ·Each of the words NUROFEN and NEO-FEN is an invented word and thus those words have no fixed point of reference for a person who sees or hears the words.  The words do not convey any definite separate ideas or meanings.  They are therefore more likely to be confused than two ordinary English words, or an ordinary English word compared to an invented word;

   ·Both words have three syllables and each word comprises 6 or 7 letters;

   ·The identical word FEN occurs as a suffix in each word;

   ·There are close visual and phonetic similarities in the words NEO and NURO, that is, each word has the letter N as the first letter followed by a vowel sound and ending with the letter O.

   ·The presence of the common suffix FEN may lead persons to be "caused to wonder" whether a series of marks are being adopted – especially where the goods are identical.

10. The presence of those points of similarity did not, he conceded, establish that the respective words are deceptively similar.  However, I agree with him that the points of similarity do serve to highlight similarities in the overall construction of the two words.

11. I will not draw this matter out by setting out copious amounts of law.  As per Starr Partners Pty Ltd v Dev Prem Pty Ltd - (2007) 71 IPR 459: “The test for deceptive similarity and the cases that have articulated the test are well known and need not be repeated.” The appropriate comparison must allow for imperfect recollection, for situations where the trade marks are not being compared side-by-side. Moreover, the authorities recognise that I should allow for notional fair use, postulating use by the applicant and by Boots for any of the respective goods[3].

    [3] See 7.70 -7.85 of Shanahan’s Australian Law of Trade Marks and Passing Off (3rd Ed).  

12. I think that proper regard must also be had to the fact that, in the trade mark registered by Boots, NUROFEN, the suffix “fen” is an oblique indication that the active compound in the goods on which the trade mark is used is ibuprofen.  Analgesics incorporating this compound have been available over the counter since 1995.  Analgesics are within the scope of the application and I think I should therefore approach the matter as might a typical consumer of such goods.  Such a consumer, if not wanting an aspirin or paracetamol compound, would typically want an ibuprofen compound. 

13. I would not like to suggest that the proprietor of the NUROFEN trade mark has any sort of monopoly on the suffix FEN.  Clearly, that is not the case.  However, the FEN element gives a context to the comparison of the trade mark on goods that are within the scope of the application and that are clearly of interest to the opponent.  A typical consumer, wanting “the ‘fen’ that is NUROFEN”, as it were, could perhaps be misled by “the ‘fen’ that is NEO-FEN”.  I note and accept the ordinary principle that emphasis will fall primarily on the first syllable of trade marks.  However, what holds good in general terms for comparisons such as CASTROL/TRIPCASTROID and VOGUE/EUROVOGUE[4] does not necessarily stretch to invented words that, at various levels, may have an overall look of similarity about them, for the reasons Mr Stevens argued.

    [4] Re London Lubricants (1920) Ltd's Application (1925) 42 RPC 264, and Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 respectively.

14. It is arguable that, a consumer having fallen into error in the recollection of either of the two invented words, as I have postulated, mistakes would be made despite the quite obvious word DOLOR that is present in the applicant’s trade mark.  Mr Stevens categorized this as “confusion”, and so it is, albeit in the sense that, having already fallen into error in recollection of the first elements, the consumer would be confused about the significance or otherwise of the element DOLOR. 

15. It is no answer to this risk of confusion to point to the visible differences in appearance that a side-by-side comparison would have revealed.  No doubt if the “real” NUROFEN is available to the consumer for comparison there is no risk of confusion on the part of anyone paying the usual degree of care that is accorded to the purchase of medicines.  That, however, is not the point.  The risk of mistake only arises when one party’s product is available and the consumer is relying on recollection of the trade mark of the other. 

16. To mature thought, fortified by either a direct comparison of the two trade marks or by an accurate recollection, the prefix NURO is strongly suggestive of the element “neuro”, whereas the prefix NEO means, roughly, either new or nearly.  Thus, the applicant’s trade mark could potentially be recalled in terms of “new Ibuprofen”.  However, in the lack of any evidence that the applicant’s trade mark is in use there is no direct evidence about the likely reaction of consumers and I will form my own view of the potential for imperfect recollection.

17. The risk of confusion or mistake is, in my view, not significant, though clearly the opponent’s view of the matter is not fanciful.  In the end, it comes down to an assessment of the likely recollection process in the context of the look of the trade marks on the shelves of supermarkets and pharmacies.  While the matter is still close to balance, the hyphen in NEO-FEN is, I think, enough.  The hyphen occurs in a logical place such that it instills a tendency to recall the invented words in question in terms of “the ‘fen’ that is NEO-FEN”, as opposed to “the ‘fen’ that is NUROFEN”.  From the latter form, in particular, comes a very different look and first impression.  

18. I think that, on balance, this is the deciding factor.  Allowing as best I can for the effects of the similarities and the differences, in look and in sound, and allowing for ordinary standards of imperfect recollection, I do not think a sufficient, real or tangible risk of deception or confusion arises.  This, like all such cases, is a case where trade marks are recalled by "the seeing and identification of certain features which are then matched to that which is contained in the memory, so that the word then is memorised"[5].  However, the factors that led to a finding that BAND-AID and BAND>>IT are deceptively similar do not exert the same force with the presently competing invented words. 

    [5] Johnson and Johnson v Kalnin, (1993) 26 IPR 435

19. Comparison of the invented word elements alone would outweigh, in the thought processes of a significant number of consumers, any impact that the second element, DOLOR, would have, though its presence (or absence, as the case may be) cannot be ignored in the balance.  The word DOLOR has a meaning that is, perhaps, somewhat unusual in application to analgesics.  However, it might also be said that there would be consumers who would recognize either “dolor” or “dolour” as descriptive, without having any precise notion of what it actually meant.  For the purposes of this exercise, I believe the word’s import to consumers will be governed by its position as much as by the dictionary.  When following the stronger and clearly coined elements to which I have referred, DOLOR takes on the look of being an indication of a variant, rather than an indicator of trade source. 

20. A similar conclusion would apply to other pharmaceutical goods. Accordingly, the necessary element of deceptive similarity is not established for s 44 purposes.

    Conclusion

21. In view of my decision on the issue of deceptive similarity, I need not consider the s 60 ground. It too must fail. The application may proceed to registration after one month from the date of this decision unless, before then, the Registrar is served with a notice of appeal from this decision. In such a case, registration will not occur until the appeal is discontinued or registration is otherwise ordered by the Court.

22. I award costs, to the limit of the scale, against the opponent.

    T. E. Williams
    Hearing Officer
    18 September 2007