The Pharmacy Guild of Australia and Gold Cross Products and Services Pty Ltd v Nova Pharmaceuticals Australasia Pty Ltd

[2023] ATMO 209438

TRADE MARKS ACT 1995

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

Re:Opposition by The Pharmacy Guild of Australia and Gold Cross Products and Services Pty Ltd to registration of trade mark application 2094387 – GLUCO BOOST – in the name of Nova Pharmaceuticals Australasia Pty Ltd

Delegate:

Bianca Irgang

Representation:

Opponent: Stephen Rebikoff of Counsel instructed by Davies Collison Cave Pty Ltd

Applicant: Lucy Davis of Counsel instructed by Ashurst Australia  

Decision:

2023 ATMO 111

Trade Marks Act 1995 (Cth) - Section 52 opposition – ss 42, 44 and 60 grounds of opposition argued – no grounds of opposition established for the goods.

Background

1. Nova Pharmaceuticals Australasia Pty Ltd (‘the applicant’), filed trade mark application number 2094387 on 9 June 2020 in classes 5 and 30 of the International Classification of Goods and Services. Current details of the application are set out below.

Trade mark:  GLUCO BOOST (the ‘Trade Mark’)

Trade mark application no:         2094387

Filing Date:  9 June 2020

Specification:  Class 5: dietetic confectionery adapted for medical purposes; medicated confectionery including glucose jelly beans

Class 30: confectionery including glucose jelly beans

1. Acceptance of the application for possible registration was advertised in the Australian Official Journal of Trade Marks dated 10 November 2020. Subsequently The Pharmacy Guild of Australia and Gold Cross Products and Services Pty Ltd (‘the opponent’) jointly filed a Notice of Intention to Oppose registration followed by a Statement of Grounds and Particulars (‘SGP’).

2. The applicant then filed its Notice of Intention to Defend. Thereafter, the opponent and the applicant filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (Cth) (‘the Regulations’).

3. I heard the opposition by teleconference as a delegate of the Registrar of Trade Marks on 30 May 2023. The opponent was represented by Stephen Rebikoff of Counsel instructed by Davies Collison Cave Pty Ltd. The applicant was represented Lucy Davis of Counsel instructed by Ashurst Australia.

Grounds of Opposition

1. The SGP nominated a number of grounds of opposition under the Trade Marks Act 1995 (Cth) (‘the Act’) and sections 44, 60 and 42(b) were pursued at the hearing. The opponent bears the onus of establishing at least one of the grounds of opposition.[1] The standard of proof is the ordinary civil standard of the balance of probabilities.[2]

   [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

   [2] Pfizer Products Inc v Karam [2006] FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132]-[133] (Besanko, Jagot and Edelman JJ).

Evidence

1. The evidence filed in this matter consists of the following declarations being:

Opponent’s evidence

• Declaration of Suzanne Greenwood, Executive Director of The Pharmacy Guild of Australia, made on 25 June 2021 (‘Greenwood 1 Declaration’), and its exhibits 1 to 29; and

• Declaration of Suzanne Greenwood made on 30 November 2021 (‘Greenwood 2 Declaration’), and exhibits.

Applicant’s evidence

• Declaration of Sundeep Khatri, President- Global Pharmacy Business of the Applicant, made on 28 September 2021 (‘Khatri 1 Declaration’), and its exhibits SK1 to SK30; and

• Declaration of Michelle Allison Anita Cooper, attorney employed by Adams Pluck,  made on 28 September 2021 (‘Cooper Declaration’), and its exhibits MAAC 1 and MAAC 2

Discussion

Section 44

1. Section 44 of the Act relevantly provides:

   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.

2. To establish its opposition in terms of section 44 of the Act the opponent must show all of the following:

• a trade mark (or trade marks), either registered or pending registration, in the name of a person other than the present applicant, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

• the trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

• the priority date(s) of the other person’s trade mark(s) is (are) the earlier.

1. The opponent is the registered owner of trade mark registration 78177 ‘GLUCOJEL’ and listed it along with trade mark registration 2013623 ‘GLUCOBEANS’, which is owned by a third party, in support of its section 44 ground of opposition. Both of these trade mark registrations also have an earlier priority date to the Trade Mark. The Trade Mark covers the same and/or related goods in classes 5 and 30 to those that relate to the opponent’s trade mark and the third party trade mark. Therefore, the remaining issue for me to determine is whether the Trade Mark is either substantially identical or deceptively similar to the previously registered trade marks put forward by the opponent. The details of those trade mark registrations are as follows:

Trade mark:  GLUCOJEL

Trade mark registration:              78177

Filing Date:  18 June 1941

Specification:  Class 30: Confectionary

Trade mark:  GLUCOBEANS

Trade mark registration:              2013623

Filing Date:  13 June 2019

Specification:  Class 30: Confectionary

1. It is obvious that neither GLUCOJEL or GLUCOBEANS is substantially identical to the Trade Mark according to the side-by side test set out by Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd[3]. While all of the respective trade marks contain the prefix ‘GLUCO-’ this is where the similarities between them end. They each have a different suffix which changes the visual and aural termination of each trade mark and precludes a finding of substantial identity.

   [3] (1963) 109 CLR 407, 414.

2. I now consider whether the Trade Mark is deceptively similar to the earlier registered trade marks. Deceptive similarity is defined by section 10 of the Act, which states ‘[f]or 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.’The determination of deceptive similarity requires a comparison of the impression persons of ordinary intelligence and memory would have, in recalling the opponent’s trade mark, to the impression they would get from the opposed trade mark.[4] The probability of deception must be finite and non-trivial.[5]

   [4] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407, 415 (Windeyer J).

   [5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020, [43] (French J).

3. Trade mark registration 78177 consists of the word GLUCOJEL in plain text with no colour limitations. Trade mark registration 2013623 consists of the word GLUCOBEANS in plain text. It is fair to say that the main shared word elements of both of these registrations is the prefix GLUCO- which is a commonly understood shortening of the word ‘glucose’. Glucose is a particular type of sugar found in foods and the human body uses it for energy. The applicant has argued:

   This prefix is plainly descriptive by its ordinary meaning when used in relation to confectionery which contains sugar (glucose), and therefore consumers are likely to give less attention to the prefix “GLUCO” and recall the “GLUCOJEL” mark as a whole in their imperfect recollection. Given its defined meaning in Australian English, “GLUCO” alone has no capacity to distinguish one trader’s confectionery from that of another, because it would literally indicate “confectionary containing glucose”, whether correctly or not in the case of the particular confectionary. The mere fact that it may not correctly describe every item of confectionery does not diminish its descriptive character in respect of these goods, in the same way that “corner hotel” is descriptive of hotels despite not all hotels being located on a corner.

4. I agree with the applicant on these points. The opponent has argued:

…although the reference to glucose can be regarded as an indirect allusion to the characteristics of some confectionery products, it cannot be said to be descriptive when regard is had to the full scope of the goods covered by the respective specifications. As the Full Court emphasised in Combe International (2021) 157 IPR 230 at [73], “deceptive similarity for the purposes of s 44 is not to be considered having regard to actual use, but rather to the extent of the monopoly sought.” Accordingly, in no sense can the GLUCO element of the marks be regarded as having any descriptive meaning in the context of the overwhelming majority of confectionary products (which do not contain glucose).

1. However, I am not persuaded by this reasoning. As already discussed, the prefix GLUCO- is the common element in all the trade mark representations. This term is indicative to the average Australian consumer that the broad confectionary goods claimed, which is of interest to both the applicant and the opponent, contain or are made from glucose. It is also an expression which other traders dealing in confectionary are likely to use in the ordinary course of their business. The use of such a prima facie non-distinctive term within each of the trade marks is unlikely to cause the potential consumer to wonder whether the trade marks are related.

2. Applying these considerations, I am not satisfied the Trade Mark is deceptively similar to either of the trade mark registrations put forward by the opponent, particularly when the trade marks are considered, as they must be, as wholes. To refuse the Trade Mark because of the common and descriptive prefix GLUCO- would impermissibly seize on a single similarity between the trade marks, while ignoring the trade marks in their entirety. I recall, ‘it is the whole mark as used which is the subject of the comparison with the registered mark.’[6].

   [6] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

3. In this case, the respective trade marks are all structured similarly. GLUCOJEL and GLUCOBEANS both contain a combination of what may be perceived by the average Australian consumer to be a descriptive term; GLUCO- describing what the goods are made of or contain and JEL or BEANS describing the texture or shape. The Trade Mark is also structured similarly using the descriptive prefix GLUCO- followed by the word BOOST which may be descriptive of the purpose of the glucose in the goods. Given the descriptive nature of the respective terms used in all the trade marks, they become an allusion to confectionary containing glucose which is in gel form, shaped as a bean or provides a boost in sugar or energy. These are all different ideas and the small changes in those visual, aural and cognitive cues are all important and carry significant weight when considering the respective trade marks.

4. Therefore, I am not satisfied there would be a real and tangible danger of confusion arising[7] between the respective trade marks. My finding is that the respective trade marks of the two parties are neither substantially identical nor deceptively similar. As a result of this finding, the ground of opposition under section 44 has not been made out.

   [7] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, 382 (French J).

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

   60  Trade mark similar to trade mark that has acquired a reputation in Australia

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)  another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

   (b)  because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

2. To establish the ground of opposition under section 60 the opponent relies on its use of and the acquired reputation in the trade mark GLUCOJEL.

3. Unlike section 44 of the Act, section 60 does not require that the goods upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the opponent’s trade mark be substantially identical or deceptively similar to the Trade Mark. However, I note from the evidence of both parties that the goods both parties use their respective trade marks on are glucose jellybeans although the applicant has a broad claim for all dietic confectionary in class 5 and both the applicant and the opponent claim confectionary in class 30.

4. It is for me to determine whether the opponent has established that before 18 November 2018 its GLUCOJEL trade mark was recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of the Trade Mark would be likely to cause the public confusion.

5. In relation to reputation Kenny J states in McCormick & Co Inc v McCormick[8]:

   [i]n ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

   [R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

Justice Kenny continues:

[i]n practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

[8] (2000) 51 IPR 102, 128-129.

1. In considering whether the trade mark GLUCOJEL has acquired a reputation in its goods, I turn to the opponent’s evidence of use of the GLUCOJEL trade mark in Australia. Greenwood 1 establishes that the opponent obtained registration of its trade mark in 1941 and that since that time the opponent has made specially formulated glucose jellybeans which have been sold through pharmacies all across Australia[9].

   [9] Greenwood 1, Exhibits 5, 7, 8 and 9.

2. According to Ms Greenwood, the opponent’s jellybeans are sold in roughly 96-98% of all Australian pharmacies. I note from confidential exhibits 14 and 15 of Greenwood 1 that the sales of the opponent’s jellybeans are considerable and growing each year. Confidential exhibit 16 outlines reasonable advertising, marketing and brand development expenditure during 2013 until 2020. The opponent advertises its goods through a range of mediums including posters sent to pharmacies, magazine advertisements, competitions and its website.[10]

   [10] Greenwood 1, Exhibits 17 to 20.

3. The opponent’s evidence demonstrates a consistent and large reputation in Australia for its sugar-controlled jellybeans. However, I now must determine if the opponent’s trade mark has acquired a reputation in Australia because of which the use of the Trade Mark would be likely to deceive or cause confusion. This is more than the opponent merely indicating prior use, the opponent’s trade mark needs to be ‘associated in the minds of the Australian public’[11] to such a degree that confusion is likely. This is the main point of contention between the two parties.

   [11] Seven Up Co v OT Ltd (1947) 75 CLR 203, 211 (Williams J).

4. The applicant has agreed that the opponent has a significant reputation in its GLUCOJEL trade mark for jelly beans. However, the applicant has argued that there is no reputation solely in the word GLUCO- such that the use of the Trade Mark on its goods in class 5 and 30 would deceive or cause confusion. Ms Davis also argued that the Trade Mark is for the combination of the two words ‘GLUCO BOOST’ and that there are substantial differences between the opponent’s trade mark and the Trade Mark even though they share the prefix GLUCO-. This is because GLUCO- is a common and well understood shortening of the word GLUCOSE which is the primary ingredient of the respective goods and therefore, descriptive of the goods. Because it is a descriptive term for the goods, the applicant has claimed that it is non-distinctive and referred me to Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd[12] where Justice Stephen[13] said:

   [t]here is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensure that it is not distinctive of any particular business and hence its application to other like business will not ordinarily mislead the public… quite small differences in a competitor’s trade name will render the latter immune from action…

   [12] (1978) 140 CLR 216, 229-230.

   [13] With Barwick CJ and Jacobs and Aickin JJ concurring. See also, Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44, [167] (Yates, Stewart and Rofe JJ) where descriptive elements were relevant considerations for the court’s section 44 comparison.

5. The opponent has argued that:

   …having regard to the strength of the reputation of the GLUCOJEL trade mark in Australia, the visual and aural similarities between the Opposed Mark and the GLUCOJEL Mark, and the complete overlap between the goods for which the GLUCOJEL Mark is known, and those in respect of which the Opposed Mark is sought to be registered, there is a significant risk of deception or confusion in relation to the use of the Opposed Mark for those goods: see Pottle Productions [2012] ATMO 124 at [40]. In particular, given the use of the prefix GLUCO at the start of each mark, there is undoubtedly a risk that consumers of confectionery products will be perplexed, mixed up, left in doubt or caused to wonder whether it might not be the case that confectionery products sold under the Opposed Mark come from the same source as confectionery products bearing the GLUCOJEL trade mark: see Self-Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8 at [30]-[32].

6. The degree of distinctiveness of the element or elements shared by the parties’ respective trade marks under comparison, in this case the prefix GLUCO, is limited. The likelihood of relevant deception or confusion is in my view low. There are immediately obvious visual, aural and semantic differences between the parties’ marks when considered as wholes. The marks as wholes do not look alike, nor do they sound alike apart from the prefix, in my estimation. 

7. While I do agree that it is important to consider possible notional use of the Trade Mark, that is to consider ‘what the [a]pplicant can do if registration is obtained’,[14] the evidence before me does not suggest the applicant’s intention is to mimic the manner in which the opponent’s trade mark is rendered and judicial commentary in this regard indicates I must assume use of an opposed mark in a ‘fair and reasonable manner’[15] and by reference to the use to which [the applicant] can properly put [his] trade mark’[16].

   [14] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

   [15] Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97, 101 (Evershed J).

   [16] Berlei Hestia Industries Ltd v Bali Co Inc (1973) 129 CLR 353, 362 (Mason J).

8. In considering the respective trade marks it becomes clear that the only similarity between them is the prefix element GLUCO-. Mr Rebikoff has argued that a similarity of idea, impression and language would give rise to a real risk that consumers might have cause to wonder that the Trade Mark used on the applicant’s goods was somehow related to the opponent’s goods or those of the third party. He cited the case of Tran v Meldrum[17] in support of his argument. However, I am not persuaded by this reasoning.

   [17] (1999) 44 IPR 233 (Hearing Officer Hardie).

1. Where trade marks share a descriptive element, small differences between the marks will take on and have greater emphasis when considering the differences between the trade marks. When the trade marks are considered as wholes, as they must be, I am not satisfied that use of the Trade Mark will lead a significant number of consumers to experience a reasonable doubt[18] as to the existence of some sort of connection between the opponent’s GLUCOJEL trade mark, the GLUCOBEANS trade mark and the Trade Mark.

   [18] Southern Cross (n 14) 594-5 (Kitto J).

2. The Opponent has accordingly not established its ground of opposition under section 60.

Section 42(b) – Contrary to Law

1. Section 42(b) of the Act is reproduced below:

   42  Trade mark scandalous or its use contrary to law

   An application for the registration of a trade mark must be rejected if:

   (a)  the trade mark contains or consists of scandalous matter; or

   (b)  its use would be contrary to law.

2. I have found that the use of the Trade Mark is not, at a minimum, likely to ‘deceive or confuse’ under section 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive. I thus find that the opponent has not established the ground of opposition under section 42(b).

Decision

1. Section 55 of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, 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.

1. The opponent has not established any grounds of opposition. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration of the Trade Mark shall not occur until the appeal has been decided or discontinued.

Costs

1. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

9 August 2023