The Pharmaceutical Plant Co Pty Ltd v TP Health Ltd

[2006] ATMO 50

TRADE MARKS ACT 1995

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

Re:Opposition by The Pharmaceutical Plant Co Pty Ltd to registration of trade mark application 971726(5) - LIVERPLEX - filed in the name of T P Health Limited.

Delegate:

Alison Windsor

Representation:

Opponent:  Susan C Thompson of counsel instructed by Barrett Walker, Lawyers

Applicant:  Michelle Howe, associate of Davies Collison Cave, Patent and Trade Mark Attorneys

Decision:

S52 opposition:  Grounds under sections 44, 58 and 60 not established – opposition dismissed – costs awarded against opponent.

Background

1. T P Health Limited (“the applicant”) filed a trade mark application, current details of which are shown below:

Application Number:  971726

Priority date:  25 September 2003

Trade Mark:  liverplex

Class No:  5

Goods specification:  Medicinal herbs, herbal substances, mineral supplements, preparations for medical and therapeutic purposes

1. The application was examined in the normal course of events, and grounds for rejection were raised under the provisions of section 44 of the Trade Marks Act 1995 (“the Act”) because of an earlier filed trade mark.  Current details of that trade mark are set out below.

Trade Mark Number:  911929

Priority date:  8 May 2002

Trade Mark:  

Class No:  5

Goods specification:  A liver tonic that helps maintain a healthy digestive

Function

Registered Owner:  The Pharmaceutical Plant Company Pty. Ltd

1. Following receipt of the official report, the applicant provided information to the examiner, and the application was advertised as accepted for possible registration on 22 April 2004.  The acceptance was endorsed as being made under the provisions of subsection 44(4) (prior use).

2. The Pharmaceutical Plant Company Pty. Ltd (“the opponent”) filed notice of opposition on 28 May 2004.  Evidence in support and evidence in answer were filed  and served in due course.

3. As delegate of the Registrar, I heard the matter in Canberra on 7 April 2006.    Susan Thompson of counsel appeared via telephone conference to represent the opponent.  Michelle Howe of Davies Collison Cave in Sydney appeared in person to represent the applicant.

Evidence

1. The evidence filed and served is set out in the table below.

Declarant	Date Declared	Exhibits
Evidence in support Gordon S Robertson Graham Williams	24 August 2004 24 August 2004	GSR-1 to GSR-6 GRW-1 to GRW-2
Evidence in Answer Katherine Louise Kemp Bruce McGilvray	20 April 2005 18 May 2005	KLK-1 BG-1 to BG-2

Evidence in support

1. The Robertson declaration states that the opponent company was established as a vehicle to purchase an existing business which manufactured herbal medicines.  The existing firm had been trading since 1987 under the name “The Pharmaceutical Plant Company”.  The opponent company continued trading and built on the existing business goodwill with emphasis on manufacturing, preparing and processing herbal and homeopathic medicines, herbal preparations and associated products.  These goods were distributed and sold via naturopathic and homeopathic practitioners and various retail outlets, including pharmacies and health food shops throughout Australia.  The declaration attests to the various licences and certifications held by the company in respect of its herbal and medicinal preparations.

2. Towards the end of 1992, the company decided to promote certain medicinal homeopathic products and herbal preparations by establishing what they referred to as their “plex” range.  Mr Robertson states the suffix “–plex” is short for “complex”, and its use is consistent with the commonplace naming of herbal medicines used throughout the homeopathic fraternity, referring to those substances containing two or more active ingredients.  Included in this range and first promoted and sold throughout Australia around early September 1998[1], he says, is the liverplex preparation.  This, Mr Robertson says, is one of the company’s most popular preparations.  He describes it as follows:  “This preparation is based on Dr Hulda Clark’s original formula of a proven and well respected liver cleansing product comprised of ten main constituents being St Mary’s thistle, dandelion root, tumeric, gravel root, mullein leaf, black walnut, marshmallow, liquorice, wild yam and skullcap”.  Dr Hulda Clark is described in the declaration as a “world renowned” Canadian naturopath.

   [1] Paragraph 10 quotes the date as September 1988, while paragraph 13 says September 1998.  Given Mr Robertson says he decided to promote  the “–plex” range in late 1992, I infer the 1988 date is a typographical error.

3. The Robertson declaration notes that there have been various versions of the word liverplex in use on the goods with or without the “get-up” (described as the “house logo”) shown in the now-registered trade mark.  Annexure GSR6 provides photocopies of brochures showing the trade mark in use on the goods. 

4. The declaration incorporates estimated sales figures for the product for the period 2001 to 2004, noting that computer problems prevent the provision of earlier figures.  Mr Robertson also notes that the most recent figures for the financial year 2003/2004 are appreciably lower than previous years.  He expresses concern that this result may well be due to confusion in the marketplace between his product and that of the applicant.

5. The Williams declaration is made by Graham Williams, a qualified homeopath with 10 years experience as a homeopath and natural therapist and experience within the retail health industry as well.  From his experience within the industry Mr Williams says he is familiar with both substances which carry the liverplex name.  He recalls seeing the applicant’s product around 2000.  He notes that the two products contain different herbs and are likely to have different effects in use, despite being used for the general “liver cleansing” purpose.  

6. Mr Williams considers there is a real potential for confusion between the products on the part of both customers and sales persons.  He attests to one instance where he was contacted by a sales assistant who was unable to advise a customer of the differences between the two products both labeled liverplex.  In his final paragraph, he comments on the confusion issue as follows:  “I do and would normally carefully question a customer who requests “Liverplex” before recommending or selling the product to that person.  However, in my experience about 25% of customers who visit health food shops have a particular product in mind that they’ve been recommended or seen advertised.  Where a customer inadvertently purchases “the wrong Liverplex” product, while it is highly unlikely that there would be a risk to that customer’s health the customer may well not be getting what he or she believes to be the product that has been recommended or advertised.”

Evidence in answer

1. The Kemp declaration consists of reference to a search of the Trade Marks Office electronic database, and includes a list of 120 entries in class 5 appearing on the database all of which include the suffix “-plex”.

2. The McGilvray declaration attests to Mr McGilvray’s 30 years experience in the manufacturing and marketing of pharmaceutical and complementary healthcare products.  In that time he says, he has never heard of the use of the trade mark liverplex by any other company or individual until this opposition was filed.  He also states that there has been no confusion between the two products reported via a 1800 consumer assistance help line run by his company.

3. Mr McGilvray says the trade mark liverplex was first used by his company in September 2000 to identify a herbal liver tonic formulation.  The declaration provides sales figures for the liverplex product covering the period July 2000 to June 2004, as well as numbers of items sold.  The advertising figures provided, Mr McGilvray notes, are for a complete range of goods under the Greenridge banner, not just the liverplex product.  He also refers to an informal survey conducted by 12 sales representatives of his company (servicing 1300 retail outlets), only 2 of whom were able to locate store owners aware of the opponent’s products.  He refers to in-store training programs his company gives to all retailers of his products, designed to ensure appropriate choice of product.  Annexures to the declaration (BG-1 and BG-2) show the trade mark word in use on labels on the goods claimed.  Amongst the material, there are two versions of the labeling provided, shown in paragraph 32 below.  None of the examples provided are clearly dated.

Submissions

1. I shall address the submissions of the parties as is necessary in my reasons, below.

Discussion and reasons

1. For an opposition to be successful, the onus is on the opponent to establish at least one ground of opposition it is relying on.

2. The opponent’s submissions dealt with grounds raised under section 44, section 58 and section 60. For completeness, I find the grounds under sections 41, 42 and 62 have not been established.

Section 44 – identical etc trade marks

1. In respect of this ground, the Act relevantly allows the following:

Identical etc. trade marks

44.(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.

…

(3) If the Registrar in either case is satisfied:

(a) that there has been honest concurrent use of the 2 trade marks; or
(b) that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

Note:  For limitations see section 6.

(4) If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:

(a) beginning before the priority date for the registration of the other trade mark in respect of:

(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and

(b) ending on the priority date for the registration of the applicant's trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

Note 1:  An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).

Note 2:  For predecessor in title see section 6.
Note 3:  For priority date see section 12.

1. In its Notice of Opposition, the opponent quoted two trade mark registrations, 779202 and 911929. Submissions were made only in respect of the latter trade mark, and that is the one I shall consider in detail. Grounds of opposition under section 44 have not been established in respect of registration 779202.

2. Three questions must all be answered in the affirmative if a ground of opposition under section 44 is to be made out:

   • Is the priority date of the opponent’s trade mark earlier than that of the applicant?
   • Are the two trade marks substantially identical or deceptively similar?
   • Are the goods similar goods?

3. There is no question about the priority date.  The opponent’s trade mark, 911929, has a priority date of 8 May 2002, 16 months before the applicant’s priority date of 25 September 2003.  This question is answered in the affirmative.

4. Considering the two goods specifications, it is clear that the opponent’s claimed goods, a liver tonic that helps maintain a healthy digestive function is included within the applicant’s claimed goods - medicinal herbs, herbal substances, mineral supplements, preparations for medical and therapeutic purposes.  The goods are therefore the same.  This question is thus also answered in the affirmative.

5. The remaining question is whether the two trade marks are substantially identical or deceptively similar.  The trade marks are as follows:

911929
971726	LIVERPLEX

1. The test for whether trade marks are substantially identical requires that the two trade marks “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”.[2]

   [2] Per Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407 at 414-415:

2. On a side by side comparison, there are similarities between the trade marks.  They both include a variation of the word liverplex.  The opponent’s trade mark has split this word over two lines as liver plex.  The opponent also has additional “get-up” with the word – oblique lines, the word “herbal” and variations in font within the word liver plex.  The applicant’s mark is the word in upper case letters.  I consider, on a side by side comparison, the total impression of the two trade marks will be the word liverplex.  The additional material in the opponent’s trade mark serves only as descriptive or decorative adjuncts to the word.  It is immaterial whether the word is divided or not.  The total impression is one of complete similarity, and the two trade marks must be regarded as substantially identical.

3. The third question is thus answered in the affirmative. 

Discretion within section 44

1. Having found the three questions pertinent to section 44 answered in the affirmative is not, however, the end of the matter. There is a discretion within section 44 for the Registrar to take account of concurrent use or prior use of a trade mark within the marketplace. These provisions allow a number of trade marks which are caught by the provisions of subsection 44(1) to coexist on the register, and it is appropriate here that I consider them, the more so since I note the application was accepted for possible registration under the provisions of subsection 44(4).

Honest concurrent and prior continuous use

1. If, during the course of examination, an applicant satisfies the examiner that the requirements of subsection 44(4) have been met, the trade mark application will be accepted for possible registration.  For the purposes of achieving acceptance, the examiner will request the applicant provide a statutory declaration which attests to the applicant’s use of their trade mark from before the earlier trade mark’s priority date, continuing up until at least their own filing date.  The declaration is taken at face value at the examination  stage, and minimal corroborating evidence is required. 

2. The examples of the trade mark in use provided as part of the evidence in answer show the following two versions of the label affixed to the applicant’s goods:

Image 1                        Image 2               

1. The opponent in its submissions puts weight on the presence of the word “herbal” or the expression “liver tonic” used with the trade mark, pointing to the importance of these terms in creating a “composite mark”, and thus one which is not the same as that applied for. 

2. What I consider is important here is a basic question, but one which is of significance in respect of this opposition:  does the evidence the applicant has provided show use of the trade mark as filed, or does it show one with a different identity?

3. The word LiverPlex or LiverPlex is prominent on each label.  Despite the additional material, which includes the word “Greenridge”, a triangular device pointing down from the top edge, as well as the word “herbal”, or the expression “liver tonic” mentioned by the opponent in its submissions, the main thrust of the label is the word Liverplex.  The labels also include colours and in Image 1, a checked background, but I do not consider these latter factors are of great import for the purpose of this consideration. 

4. The trade mark as filed is the word LIVERPLEX in plain uppercase letters.  The use demonstrates two minor changes in font styles, noted above at the beginning of paragraph 33.  Any additional words used with the trade mark are either descriptive words, such as “herbal” or “liver tonic”, or are another trade mark entirely such as “Greenridge”.  It is not unusual for a trader to use more than one trade mark on its labeling, and this is what is shown on the applicant’s labeling.  I am satisfied the mode of use does not change the identity of the trade mark the applicant has applied for.

5. As well as the questions about the mark in commercial use, there are questions about the claimed date of first use.  For the purposes of responding to the examiner’s first report, the applicant nominated a first use date of June 2000.  The McGilvray declaration provided as evidence in answer attests to first use in September 2000.  This is an inconsistency in the applicant’s evidence. 

6. However, while the applicant’s evidence of use is far from comprehensive, and the exhibits provided are not clearly dated, there is annotation on some of the annexures which I infer refers to a date relevant to the trade mark use.  Annexure BG-2 to the McGilvray declaration includes a number of advertisement sheets and other papers, most of which incorporate the claimed trade mark.  Several of these sheets have annotations on them which I infer are references to dates.  I should mention here that had I been faced with only one sheet incorporating these notations, I would not have paid it any significant attention, but there are several references, and these references appear in respect of the two different labels I mentioned above.

7. From the information provided, it appears that the labeling shown at Image 1 above is a version of labeling used on the goods at an earlier date than that shown at Image 2.  Image 2 appears to be the current label in use on the goods.  Annexure BG-1 to the McGilvray declaration consists of a bottle of the applicant’s product incorporating this more recent label, and noting an expiry date for the product shown as “04 08”. 

8. The annotation I referred to above appearing on the examples of the more recent label is the following combination of letters and numbers - CHC32914-03/09.  This appears on two examples of this type of label.  On documents featuring the earlier label and generally headed “Feeling like a grumpy old so and so?”, the annotation is CHC30349-00/09.  I must express ignorance of the import of most of this annotation, but I infer the final four digits refer to a date.  The earliest of these dates is that appearing on the older label – 00/09 – that is, September 2000, the date of earliest use noted in the McGilvray declaration.  I am satisfied this is a substantiated date for Mr McGilvray’s claim of prior use.

9. I am therefore satisfied that the applicant has demonstrated use of his trade mark in the relevant market from a date earlier than the opponent’s priority date. However, I note that use has only been demonstrated in respect of a single preparation described as “a herbal liver tonic formulation”. I do not consider it appropriate to allow the prior use provisions to be applied for the much broader range of goods noted in the trade mark application. If the applicant’s goods claim is restricted to “herbal liver tonic formulation”, the claim for prior use will have been made out and the provisions of subsection 44(4) may then be applied. The ground of opposition under section 44 will not have been established.

Section 58 – applicant not owner of trade mark

1. For an opponent to establish this ground of opposition, it must be able to demonstrate it is the owner of the trade mark under common law.  The ownership rights in a trade mark reside in either the first use in trade in Australia on the relevant goods[3], or the making of the application to register[4], whichever is the earlier. 

   [3] See Settef S.p.A. v Riv-Oland Marble Co. (Vic) Pty Ltd 10 IPR 402 at 413. This is in reference to the common law right in the trade mark.

   [4] See Shell Co (Aust) Ltd v Rohm & Haas Co (1948) 78 CLR 601 at 625 to 628

2. The Robertson declaration, paragraph 13, claims a date of first use of September 1998.  However, none of the examples provided clearly substantiate this date.  Annexure GSR-6 includes photocopies of pamphlets which are hand dated.  Mr Robertson mentions this dating in paragraph 15 as follows:  “Please note that where there are no printed dates on the original documents I have indicated the approximate dates in my handwriting (initialed)”.  These dates are written as “1998/9”.

3. I am not satisfied that these annotations are sufficient to substantiate the claimed date of first use.  Mr Robertson specifies that the dates are “approximate”.  In addition, he provides reference to two years in each date, and the approximations were made some five or six years after the documents were issued.  This kind of approximation as to date does not define the actual date in any way.  By only providing an approximation of a date some 6 years after the event, Mr Robertson has not substantiated any of his claimed dates of use.  I am not satisfied the date of first use has been substantiated.  

4. I find that since the opponent has not substantiated its date of first use, I am unable to be satisfied that it has the right to claim ownership of the trade mark. The ground of opposition under section 58 has not been established.

Section 60 – trade mark with a reputation in Australia

1. The opponent has not provided sufficient information to support a claim for a reputation as envisaged by this section of the Act. Its sales volumes are not large, and evidence about promotion and recognition in the trade are more hinted at than substantiated. This ground of opposition therefore has not been established.

Decision.

1. The opponent has not established grounds of opposition under sections 58 and 60. In respect of the ground under section 44, I will register the trade mark under the provisions of subsection 44(4)- prior use, on the condition the applicant requests its goods specification be amended to read “herbal liver tonic formulation”. If this condition is not met, the application is refused. The request should be made within one month of the date of this decision.

Appeal

1. This decision is subject to appeal to the Federal Court.  If the registrar is notified of an appeal, the application should not be amended or registered until the Court has decided the appeal, or the appeal has been discontinued.

Costs

1. The applicant having been successful is entitled to its costs and I award costs as per Schedule 8 of the Regulations against the opponent.

Alison Windsor

Hearings Officer

Trade Marks Hearings

23 June 2006