Vatole Pty Ltd v Boehringer Ingelheim KG

[1992] ATMO 77

TRADE MARKS ACT 1955

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS

Re:Opposition by BOEHRINGER INGLEHEIM KG to the registration of Trade Mark application number 511525 in the name of VATOLE PTY LTD

Trade mark application 511525 in the name of Vatole Pty Ltd (the applicant) was lodged on 16 May 1989.  The mark, which is shown below, was advertised accepted on 14 February 1991 for pharmaceutical preparations in class 5.

As allowed by sub-section 49(1), registration has been opposed.  The opponent, Boehringer Ingelheim KG, relied on various grounds of opposition, not all of which were pursued at the hearing.  As allowed by the regulations, the opponent lodged its evidence in support, but the applicant did not serve any evidence in answer.  A hearing was set down for 21 October 1992 in Sydney.  The opponent was represented by Ms Catherine Chant, solicitor, of the firm Davies Collison Cave.  The applicant was not represented and made no submissions.

Grounds, evidence and submissions
At the hearing, Ms Chant drew attention to the opponent's marks, BEROTEC and BEROTEC INHALETS, which formed the basis of the objection.  The marks are registered for "a preparation for the treatment of colds and respiratory difficulties" and "pharmaceutical preparations being inhalants" respectively.  She said that the opponent's main objections were under sections 33(1) and 28(a), (b) and (d).
In support of its case the opponent lodged, as evidence, two statutory declarations, one by Ian Ralston Mills, managing director of Boehringer Ingelheim Pty Ltd, the Australian distributor of the opponent's products, and the other by Jurgen Romhild, no position stated, of the opponent company.  Both declarants stated that the trade mark BEROTEC had been used throughout Australia since 1976 on products for relief of bronchospasm associated with bronchial asthma, bronchitis, chronic obstructive airways disease and other broncho-pulmonary conditions including exercise-induced asthma.  Mr Ralston has long experience in the pharmaceutical industry and he stated he had never encountered any use of the applicant's products.  Mr Romhild stated that it was his company's view that the applicant's mark was confusingly similar to BEROTEC and that, depending on the nature of the pharmaceutical preparations sold under the name PROTEC, danger to human life could result if the marks were confused.  Both declarants annexed examples of the packaging of BEROTEC products to their statutory declarations.  All contained the warning that they should not be used with other asthma sprays or remedies without medical advice and all indicate they were only available on prescription. The evidence did not give any indication of the extent of sales in Australia other than geographically nor were any details of advertising or the extent of advertising provided.

At the hearing, Ms Chant submitted that there were similarities between the marks because of ending ROTEC, and that the goods of the applicant encompassed the goods of the opponent's registrations.  She submitted that deciding whether the marks were deceptively similar or substantially identical was a question of fact to be determined by comparing the trade marks by sight and by sound and by considering surrounding circumstances: Pianotist Co. Ltd's Appn (1906) 23 RPC 774 at 777. Ms Chant submitted that one of the factors to be taken into account in the comparison was that of imperfect recollection: Rysta Ltd's Appn (1943) 60 RPC 87 at 108. She submitted that the present case was analagous because the overall effect of each trade mark was similar, despite the different prefixes, because they had identical endings. Thus there was the distinct possibility that a consumer with only imperfect recollection of the opponent's mark could confuse the applicant's trade mark for that of the opponent.

Ms Chant drew attention to the fact that the opponent's goods were available on prescription.  Given this and the notoriously bad handwriting of doctors when making out prescriptions there was a strong possibility, despite the different prefixes, that the applicant's trade mark could be confused with the opponent's trade mark in written form: Dow Chemical Co. v C.H. Boehringer Sohn KG (1987) 9 RPC 360 (PRIFANTIN/PERSANTIN); Luitpold-Werke KG v Galen Ltd (1985) IPD 7108 (MOBILAN/MOVELAT).  Given this possibility, medical ancillaries, stockists and patients as well as doctors and pharmacists could be confused: W.B. Pharmaceuticals Ltd v Welcome Foundation Ltd (1985) IPD 8024 (HERPIAX/HERPID).

Ms Chant submitted that serious consequences could arise as a result of confusion and that Edward's Appn (1946) 63 RPC 19 (JARDEX/JARDOX) was relevant here despite the differences between the facts of the two cases. Ms Chant submitted that because there was a real danger of pharmacists being confused by doctors' poor handwriting or consumers being confused by the similarity of the trade marks and because of the possibility of serious consequences arising from confusion, registration of the applicant's mark should be refused on the basis that it contravened sections 28 and 33(1) of the Act or, alternatively, pursuant to the exercise of the Registrar's discretion because of the risks involved to customers.

Decision
I will deal in turn with the two grounds of opposition under sections 33 and 28 that were pursued at the hearing.

Section 33
Since the applicant is seeking registration of its mark for pharmaceutical preparations and such a specification encompasses the opponent's goods there is no question that the goods of the applicant are the same, or of the same description, as those of the opponent.  The opponent's marks BEROTEC and BEROTEC INHALETS have been registered since 29 January 1960 and 15 March 1989 respectively.  The applicant lodged its application on 16 May 1989.  In the absence of evidence to the contrary, the opponent's marks have the earlier priority date.  Therefore, the question I have to decide under this section is whether the two marks are substantially identical or deceptively similar.

Substantial identity is to be judged by a side by side comparison of the marks: Shell Co. (Aust.) Ltd v. Esso Standard Oil (Aust.) Ltd (1961) 109 CLR 407 at 414-15. I am satisfied that the marks are not substantially identical and I do not think it was suggested they were. While both marks contain the element ROTEC, the opponent's marks begin with BE and the applicant's with P. The applicant's mark incorporates a significant device element. The opponent's marks are shown used in plain script and in the case of 506786 includes the word INHALET. When the marks are compared in detail side by side they present quite a different and distinct appearance.

Deceptive similarity is defined by sub-section 6(3).  In determining whether the applicant's mark so nearly resembles the opponent's mark as to be likely to deceive or cause confusion, the test to be applied can be stated by adapting the words of the Privy Council in the "Solavoid" Trade Mark [1977] RPC 1 at 2, which in turn derive from the questions posed by Evershed J in Smith Hayden & Co Ltd's Application (1946) 63 RPC 97: "(Under s 33(1)) assuming use by the applicant of its trade mark PROTEC in a normal and fair manner for pharmaceutical preparations, is the Registrar satisfied that there would be reasonable likelihood of deception or confusion among a substantial number of persons if BEROTEC and BEROTEC INHALETS were used in a normal and fair manner for a preparation for the treatment of colds and respiratory difficulties, and pharmaceutical preparations being inhalants?" This notional use extends to all the goods in respect of which the application has been made and for which the opponent's mark has been registered. Even though the evidence indicates the opponent's marks are used on prescription goods, the specifications of both proprietors are wide enough to include prescription and non-prescription goods.
Ms Chant had referred me to the well known passage of Parker J in Pianotist Co. Ltd's Application supra, the classic test to be applied in comparing two trade marks.  Ms Chant had submitted that the two marks would be confused because their identical endings, ROTEC, produce a similar overall effect and that confusion would result from customers' imperfect recollection of the marks.  While I don't dispute that the combination of letters, ROTEC, can be singled out as an element in the marks, it does not clearly form an independent visual or oral entity in either mark.  BEROTEC could be viewed and pronounced in a variety of ways including the one suggested by Ms Chant, BE/ROTEC.  However, I cannot agree that PROTEC would be viewed or pronounced as P/ROTEC.  The natural division here would be based on its easily recognisable components PRO and TEC.  The RO forms part of the prefix not the ending.  While the split Ms Chant is suggesting of BE and ROTEC is quite possible, I believe it would be quite unlikely that the ordinary consumer would base their recollection of the marks, however imperfectly, on the ROTEC element of PROTEC.  Whatever the syllabic division of BEROTEC, the prefixes of both marks are significantly different and would, I believe, be emphasised in normal speech: London Lubricants (1920) Ltd's Appn 42 RPC 264 at 279. The applicant's mark has a device component which is an integral part of it and would assist in differentiating the marks visually. If the marks were used on generally available pharmaceutical goods, I don't believe that the overall effect of the marks is so similar that one would be confused with the other, either orally or visually, even as a result of customers' imperfect recollection.

However, Ms Chant also drew attention to the fact that doctors' notoriously poor handwriting is a potential source of confusion where goods are available on prescription.  Even if poorly written, I think the significant difference in the initial letters of the two marks, B as opposed to P followed by ER and RO respectively, would enable a clear differentiation to be made between the two words in script form.  In W.B. Pharmaceuticals Ltd v Welcome Foundation Ltd supra, it was observed that "handwriting often shows the beginnings of words in prescriptions fairly clearly, but is less clear at the end of words".  In all the cases cited by Ms Chant, the initial letters, and often the following ones, were the same.  That is not the case here.   Further, it must be remembered that one of the important features of the circumstances surrounding the prescription use of the two marks is the fact that they would be used by doctors and pharmacists who are skilled persons.  There are many authorities to support the view that skilled persons are most unlikely to refer to the relevant products in a way which would admit any reasonable probability of confusion: Bayer Products Ltd's Application (1947) 64 RPC 125 at 137. This case was applied by Hearing Officer Williams: Aktibolaget Astra v. Schering Corporation 22 IPR 485 at 489, who said:

"I must allow for the fact that doctors and pharmacists are skilled professionals, used to dealing with potent drugs which can only safely be used and dispensed with caution."

Because of these circumstances, it seems to me, that confusion of the marks in the prescribing/dispensing of both proprietors' products is not likely to occur.  It is not clear in the decision, W.B. Pharmaceuticals Ltd v Welcome Foundation Ltd supra, why it was thought others besides doctors and pharmacists would be confused.  In this case it is unlikely they would have cause to be confused by a doctor's script, and it is unlikely, as discussed above, that they would be confused by the marks in other circumstances.

I believe that sufficient differences exist between the marks of both proprietors, having considered the circumstances to which Ms Chant directed my attention, to allow me to find they are not deceptively similar.

In this case, since the goods are the same, or of the same description rather than quite different goods as was the case in Edwards Appn supra, it is appropriate to consider the matter of the serious consequences of confusion raised by both Ms Chant and Mr Romhild under section 33 rather than section 28.  The evidence certainly shows clearly the warning applied to the opponent's packaging about use of the goods.  However, the confusion is predicated on the similarities of the marks.  In the light of the findings above, I don't think there is a reasonable probability of serious consequences resulting if the marks of both proprietors are in use and normal care is taken: Bayer Products Ltd's Appn supra.  This being the case, there is no requirement for the exercise of the Registrar's discretion.
Section 28
Under sub-section 28(a) a trade mark may be refused on the basis of deception or confusion arising from reputation or market awareness of a conflicting mark.  For the reasons already outlined under section 33, I am not satisified that the marks would be likely to deceive or cause confusion and the evidence did little to establish the extent of the reputation the opponent may have acquired in its particular goods other than that there has been use of the mark since 1976 on what appears to be a fairly specialised product.  I find the opponent has not established a case under paragraph 28(a), and since this formed the basis of the opponent's objections under 28(b) and (d), these grounds have not been substantiated.

Conclusion
I find the opponent has failed to make out a case under either sections 33 or 28.  Therefore I direct that, subject to any appeal from this decision, the applicant's mark proceed to registration.  Since the applicant has not sought an award of costs, I make no award at this time.

Linda Sullivan
Acting Hearing Officer
4 December 1992