Valo Therapeutics Oy

[2023] ATMO 105

TRADE MARKS ACT 1995

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

Re:Proposed revocation of acceptance of trade mark application number 2303960 for VALOTX in classes 1, 5, 10, 40, 42 and 44 - in the name of Valo Therapeutics Oy.

Delegate:	Debrett G. Lyons
Representation:	Applicant: Written submissions from IP Solved (ANZ) Pty Ltd
Decision:	2023 ATMO 105 Trade Marks Act 1995: proceedings under sections 38 of the Act – acceptance revoked – application returned to examination.

Background

1. In these proceedings under the Trade Marks Act 1995 (‘the Act’) Valo Therapeutics Oy (‘the Holder’) made application 2303960 on 21 April 2022 for the extension of protection to Australia of International Registration No. 1686416 for the trade mark VALOTX (‘Trade Mark’) in classes 1, 5, 10, 40, 42 and 44 (‘the IRDA’).

2. The IRDA was examined as mandated by section 31 of the Act and accepted by a delegate of the Registrar of Trade Marks after which it was advertised as accepted in the Australian Official Journal of Trade Marks on 7 October 2022.

3. Thereafter, as a result of correspondence received from a third party on 28 November 2022, a delegate of the Registrar of Trade Marks (‘the Examiner’) issued a Notice dated 5 December 2022 proposing to revoke acceptance of the Trade Mark under section 44 of the Act (‘NOIR’). In the NOIR the Examiner stated that:

   “… it has now come to my attention that the IRDA should not have been accepted. At the time of examination, the following marks existed on the register with an earlier priority date to your IRDA:

   2148869    VALO

   2148890    VALO + device

   2148938    VALO HEALTH

   Your trade mark VALOTX is the combination of VALO and TX, where TX is short hand for therapeutics or treatment, both of which carry a descriptive meaning in relation to the goods/services claimed. The addition of TX does not alter the distinctive VALO element sufficiently to differentiate it from the above earlier marks.

   Additionally, the goods/services you have claimed are the same as or are similar to those claimed in the earlier marks. Therefore, having taken into account all the circumstances that existed when the IRDA was accepted, it is considered reasonable to revoke the acceptance in accordance with regulation 17A.27 of the Trade Marks Regulations 1995. 

4. The Applicant was given two months from the date of the NOIR to provide submissions responding to the proposed revocation or to apply to be heard. The Applicant requested a hearing by way of written submissions. Those submissions were received from Mr Kenneth McInnes of IP Solved (ANZ) Pty Ltd and acting as a delegate of the Registrar of Trade Marks I have made this decision based on those submissions and the earlier Office records.

   Section 38

5. Regulation 17A.27 of the Trade Marks Regulations 1995 brings section 38 of the Act into play. It relevantly provides:

   38Revocation of acceptance

   (1)Before a trade mark is registered, the Registrar may revoke the acceptance of the application for registration of the trade mark if he or she is satisfied that:

   (a)the application should not have been accepted, taking account of all the circumstances that existed when the application was accepted (whether or not the Registrar knew then of their existence); and

   (b)it is reasonable to revoke the acceptance, taking account of all the circumstances.

6. In Globalscope Pty Ltd[1] the Registrar’s delegate set out some of the factors involved in considerations under section 38:

   [1] [2016] ATMO 14 at [12]-[21].

   As a preliminary matter, I note that the application of section 38 is discretionary (that is: “...the Registrar may revoke the acceptance...”). That said, it would be difficult to imagine a scenario where, the requirements of both limbs having been satisfied, some other circumstance meant acceptance of the trade mark would not be revoked (given the provisions themselves take into account a consideration of “all the circumstances”).

   Most importantly, the provisions of section 38 require that both limbs of the test (i.e. ss 1(a) and 1(b)) must be satisfied before the Registrar of Trade Marks may revoke acceptance. For the avoidance of doubt, I would also add that these elements must be satisfied before the Registrar issues a letter of intention to revoke.

   […]

   The current section 38 was introduced via amendments to the Act in 2006. The Explanatory Memorandum to the Intellectual Property Laws Amendment Bill 2006 noted that the previous section 38 had been interpreted too narrowly, with the result that the protection of the public interest in keeping invalidly accepted trade marks from becoming registered had not been fully realized. As a result, the Explanatory Memorandum provided […]:

   Paragraph 38(1)(a) clarifies that the Registrar is able to take account of any circumstance that existed which should have prevented acceptance. It is not necessary that the Registrar knew or was in a position to know of the existence of the circumstances at the time the application was accepted for this paragraph to apply. This may include an error of judgement or omission on the part of the examiner, or information about the trade mark that was not available to the Registrar at the time of examination, for example:

   the examiner may have overlooked or discounted information that would lead, if properly considered, to the examiner rejecting the application; or

   an international application for a conflicting mark having an earlier priority date had not yet been filed in Australia.

   The Registrar is not limited in what he or she may consider.

   In relation to the second limb (section 38(1)(b)), the Explanatory Memorandum provided:[3]

   This consideration is not limited to the circumstances as they existed when the trade mark was accepted. Further, the Registrar is not limited in what he or she may consider.

   The new provision will allow the Registrar to revoke acceptance of a trade mark only when this course of action is reasonable, taking account of all of the circumstances. The intention of this provision is to focus attention on the reasonableness of the Registrar's actions, and not on whether or not an `error or omission' or a `special circumstance' preceded the registration of the trade mark.

   This provision ensures that the Registrar will be in a better position to effectively keep invalidly accepted trade mark applications from becoming registered, thus protecting the public interest.

   […]

   … guidance [is] provided in the Trade Marks Office Manual of Practice and Procedure (“the Manual”):

   It may also be reasonable to revoke acceptance in the circumstances where the decision to accept is one that cannot reasonably be supported by the accepted and defined tests and the decision made by the examiner is:

   •manifestly wrong,

   •clearly not just a difference of opinion, and

   •obviously disregards established authorities

7. With these principles in mind, I am required by section 38(1)(a) to first decide whether the decision to accept was one that could not reasonably be supported by the usual tests, which in this case involves section 44 of the Act. In short, that section provides that an application for the registration of a trade mark must be rejected if it is substantially identical with, or deceptively similar to, another person’s registered or pending trade mark of earlier priority date for similar goods/services or closely related services/goods.

8. The IRDA has a convention priority date of 24 January 2022. All three of the trade marks referred to in the NOIR have a priority date of 3 June 2020, earlier than that of the IRDA. That much of the section is satisfied. It is then customary to consider the overlap of the goods/services before the identity/similarity of the marks. Appendix A to this decision shows the goods and services of the IRDA; Appendix B shows the goods and services of the marks referred to in the NOIR which in each case is the same.

9. Section 14 of the Act provides that similar goods or similar services are those which are either the same or of the same description. Section 44 prohibits the acceptance of similar goods or services (in the sense just described), or goods closely related to services, or vice versa. The NOIR simply states that the goods/services claimed by the IRDA are the same as or are similar to those claimed in the earlier marks. Aside from the obvious class intersections, my observation is that there are broad tracts of overlap of either similar or closely related services/goods. Further, that a great many of the goods are of a therapeutic character and that many of the services are of a therapeutic nature or for therapeutic benefit. Whether there is conflict across the full scope of the IRDA is not entirely clear but I am satisfied that, for the purposes of section 44, every class of good and service nominated by the IRDA is problematic, such that I can move on to the remaining question of the comparison of the trade marks.

10. In that regard, it is not necessary for me to decide whether the compared marks are substantially identical or not if I find that they are deceptively similar.  The accepted test for “deceptive similarity” was laid out in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[2] where Windeyer J said:[3]

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, 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".

    [2] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

    [3] Op. cit. at [13].

11. Further, the expression “deceptively similar” is defined by section 10 of the Act:

    10Definition of deceptively similar

    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.

12. The process of assessing the likelihood of deception and confusion is informed by the factors discussed by French J in Registrar of Trade Marks v Woolworths[4]:

    [4] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50]

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

    It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362:

    "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

13. I can concentrate attention on Registration 2148869 for the word mark, VALO.  Whilst there is nothing supporting the examiner’s statement that TX is a shorthand for ‘therapeutics’ or ‘treatment’, I have been able to easily satisfy myself that is so.  I have already remarked on the general character of the goods and services of the IRDA and so I find that the letters TX are, in context, descriptive or otherwise non-distinctive.  Further, I find that the trade mark VALO is distinctive and find that addition of TX does not sufficiently differentiate the Trade Mark from the earlier mark. Importantly, I have reached that finding whether or not the letters TX are understood to be an abbreviation.  It is likely in my assessment that VALO would be pronounced separately to the adjoining letters and I note that it would be open to the Holder to use the Trade Mark as, for example, either ValoTX or ValoTx[5].  The words of Parker J in In the Matter of An Application by the Pianotist Company Ltd for the Registration of a Trade Mark[6] seem to me particularly apt:

    You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods ... you must refuse the registration, or rather you must refuse the registration in that case.           

    [5] See, for example, Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235 (6 March 2018).

    [6] (1906) 23 RPC 774 at 777.

14. I consider that there is a real, tangible danger of deception or confusion occurring in the sense that a significant number of people would have cause to wonder whether it might not be the case that the goods and services come from the same source. Accordingly, I am satisfied that section 44 of the Act existed as a ground for rejection.

15. The first limb of section 38 is established and so I am required by section 38(1)(b) to consider whether revocation is reasonable. I find that it is reasonable. I see nothing suggesting otherwise and to the limited extent that perhaps some small number of the expansive goods or services claimed by the IRDA may escape conflict under section 44, I am satisfied by the reasoning of the delegate in Henkel AG & Co KGaA.[7] where it was said that:

    Arguably, it is in the best interests of the [applicant], as well as its potential opponent, that the [applications] be returned to, and tested by, the appropriate examination processes which have hitherto been omitted. They may then proceed, should this ultimately prove necessary, to the escalation of argument and expense associated with the adversarial forum of opposition. …

    Finally, it is an important public interest, and therefore also a relevant circumstance in this matter that, wherever possible, the proper examination processes of the Office are consistently maintained. Revocation of acceptance of the [applications], allowing the valid ground for rejection to be raised, will serve that interest.

    [7] [2015] ATMO 13.

    Decision

16. I am satisfied, in terms of section 38(1) of the Act, that the IRDA should not have been accepted and that it is reasonable to revoke its acceptance.

17. Section 38(2) of the Act provides:

    If the Registrar revokes the acceptance:

    (a)    the application is taken to have never been accepted; and

    (b) the Registrar must examine, and report on, the application necessary under section 31; and

    (c)    sections 33 and 34 again apply in relation to the application.

18. Accordingly, the IRDA will be returned to examination.

    Debrett Lyons
    Hearing Officer
    Oppositions and Hearings
    3 August 2023

    APPENDIX A

    Class 1: Chemical and biological agents for scientific and research use; antioxidants for use in the manufacture of pharmaceuticals; animal albumen [raw material]; collagen for industrial purposes; antioxidants for use in manufacture; biochemical catalysts; chemical preparations for scientific purposes, other than for medical or veterinary use; protein [raw material]; preparations of microorganisms, other than for medical and veterinary use; biological preparations, other than for medical or veterinary purposes; diagnostic preparations, other than for medical or veterinary purposes.

Class 5: Biopharmaceutical and pharmaceutical preparations for treatment of autoimmune diseases, cancer, cardiovascular diseases and disorders, endocrine diseases and disorders, gastrointestinal diseases and disorders, infectious diseases, psychiatric and psychological diseases and disorders, neurological diseases and disorders, rare diseases, and respiratory diseases and disorders; therapeutic agents for the treatment of autoimmune diseases, cancer, cardiovascular diseases and disorders, endocrine diseases and disorders, gastrointestinal diseases and disorders, infectious diseases, psychiatric and psychological diseases and disorders, neurological diseases and disorders, rare diseases, and respiratory diseases and disorders; veterinary preparations; biological preparations for veterinary purposes; cultures of microorganisms for medical and veterinary use; biological preparations for medical purposes; drugs for medical purposes; diagnostic preparations for medical purposes; enzymes for medical purposes; biochemical medicines; vaccines; bioengineering pharmaceutical solutions for use in expanding cells for therapeutic use to patients with blood cancers and other diseases; biopharmaceuticals; cells and biological preparations intended for medical and clinical use, including, blood, stem cells, adult blood cells, immune cells, immunomodulatory cells, umbilical cord cells, umbilical cord blood, and placental tissue; bioengineered cells for use in immunotherapies; diagnostic materials and diagnostic preparations for medical purposes; gene and cell therapy and prophylaxis products; gene and cell therapy prophylaxis vector and vector manufacturing preparations; pharmaceutical preparations and products; pharmaceutical preparations in the nature of cell solutions to enable cell expansion for therapeutic purposes; reagents for ex vivo cell processing in particular media suitable for the expansion of cells; cell therapy products, including stem and progenitor cell, adult cell, immune cell, cell therapy and gene therapy products; cells for medical purposes.

Class 10: Medical instruments and apparatus for the administration of gene and cell therapy, immunotherapy and immunomodulation and prophylaxis products; surgical and medical apparatus and instruments for gene and cell therapy, immunotherapy and immunomodulation and prophylaxis; veterinary apparatus and instruments; radiological apparatus for medical purposes; diagnostic apparatus for medical purposes; apparatus for use in medical analysis; medical apparatus and instruments; surgical apparatus and instruments; breast pumps; apparatus, devices and articles for nursing infants; physiotherapy apparatus; galvanic therapeutic appliances; blood testing apparatus; medical devices for ex vivo cell processing.

Class 40: Contract manufacturing of pharmaceuticals, cells and gene therapy reagents, including custom manufacturing services; custom manufacturing services for others in the field of pharmaceuticals, biopharmaceuticals, cellular immunotherapies, health care products and medical products; manufacture of pharmaceuticals and biopharmaceuticals to order and/or specification of others; custom manufacturing of biological tissue, blood, and cells (including stem and progenitor cells, adult cells and immune cells); treatment of materials, namely, pharmaceutical and chemical products and their components used in the manufacture of pharmaceuticals and biopharmaceuticals and cellular immunotherapies.

Class 42: Analysis of biological samples; biopharmaceutical and pharmaceutical development and research and evaluation services in the field of cell based therapeutics and gene therapy for the treatment of disease, injuries and disorders; biotechnology laboratory services; medical and scientific laboratory services; scientific, medical and clinical research consultation services and scientific, medical and clinical research and development services, including in the field of haematology, immunology, cancer research, developmental biology and life sciences, biotechnology, medical technology, cell culture, tissue engineering, genetic engineering, regenerative medicine, immunotherapy and immunomodulation; pre-clinical and clinical trials; pharmaceutical, medical, scientific, biotechnology, and biopharmaceutical research and development; technical scientific consultation and product development for others in the field of biotechnology and immunology; development of pharmaceuticals; research and development in the field of computational biology, bioinformatics, and genomics; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; research and development of pharmaceutical preparations and substances for use in clinical trials; cloud computing; chemical analysis; industrial design; conducting technical project studies; research and development of new products for others; material testing; biological research; scientific laboratory services; scientific research; bacteriological research.

Class 44: Medical services, including regenerative treatment services; medical diagnostic testing, monitoring and reporting services; medical evaluation of immuno-oncological disorders, cancer, diabetes, respiratory, heart, neurological and auto immune disorders; providing health and medical information about medical disorders and their diagnosis, prevention and treatment; cell therapy and gene therapy services.

APPENDIX B

Class 1: Chemical and biological agents for scientific and research use.

Class 5: Pharmaceutical preparations for treatment of autoimmune diseases, cancer, cardiovascular diseases and disorders, endocrine diseases and disorders, gastrointestinal diseases and disorders, infectious diseases, psychiatric and psychological diseases and disorders, neurological diseases and disorders, rare diseases, and respiratory diseases and disorders and therapeutic agents for the treatment of autoimmune diseases, cancer, cardiovascular diseases and disorders, endocrine diseases and disorders, gastrointestinal diseases and disorders, infectious diseases, psychiatric and psychological diseases and disorders, neurological diseases and disorders, rare diseases, and respiratory diseases and disorders.

Class 9: Downloadable computer software for genetic assessment and identification of cancer, diseases, health status and metrics, and gene mutations for scientific, medical, diagnostic, treatment, and research purposes; downloadable computer software for collecting, analyzing, reporting, and tracking data and information in the fields of genetics, genomics, biology, biochemistry.

Class 36: Venture capital funding services to emerging and start-up companies; providing venture capital, development capital, private equity and investment funding; venture capital advisory services; hedge fund investment services.

Class 42: Pharmaceutical, medical, scientific, biotechnology, and biopharmaceutical research and development; technical scientific consultation and product development for others in the field of biotechnology and immunology; development of pharmaceuticals; research and development in the field of computational biology, bioinformatics, and genomics; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; research and development of pharmaceutical preparations and substances for use in clinical trials; providing on-line non-downloadable computer software for genetic assessment and identification of cancer, diseases, health status and metrics, and gene mutations for scientific, medical, diagnostic, treatment, and research purposes; providing on-line non-downloadable computer software for collecting, analyzing, reporting, and tracking data and information in the fields of genetics, genomics, biology, biochemistry.