Vectura GmbH - [2016] ATMO 77

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia number 1712464 - (5, 10) - FOX - in the name of Vectura GmbH.

Delegate:	Katrina Brown
Representation:	Blake Knowles of Cullens Pty Ltd.
Decision:	2016 ATMO 77 Trade Marks Regulations 1995 – reg 17A.24 – s 41 – IRDA capable of distinguishing – IRDA accepted for possible extension of protection to Australia.

Background

This matter is pursuant to reg 17A.24 of the Trade Marks Regulations 1995 (‘the Regulations’) involving an application for extension of protection to Australia of the following International Registration Designating Australia (‘IRDA’):

IRDA No:	1712464
International Registration No:	1259729
Trade Mark:	FOX (‘the Trade Mark’)
Holder:	Vectura GmbH (‘the Holder’)
Priority date:	28 November 2014
Goods:	Class 5: Medical and veterinary preparations and articles; pharmaceutical preparations; biological preparations for medical purposes; pharmaceutical preparations formulated for pulmonary delivery via inhalation; pharmaceutical preparations for the prevention or treatment of diseases or conditions of the respiratory and cardiovascular systems; none of the aforementioned goods including medicated confectionery Class 10: Drug delivery devices; inhalers; metered dose inhalers; active dry powder inhalers; passive dry powder inhalers; nebulisers for respiration therapy; respirators for artificial respiration; parts and fittings for all the aforesaid goods

A first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA was issued on 20 August 2015. The basis of the provisional refusal was a ground for rejection under s 41(4) of the Trade Marks Act 1995 (‘the Act’).
The examination report stated:
Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods. This is because your trade mark is FOX. This word is also the surname of many Australians.
People will often provide goods and/or services using their surname. The more common a surname is, the more likely it is that other traders may wish to use it.
Other traders with this surname should be able to use it in connection with goods or services similar to yours.
As a guide, a surname is considered a relatively common one if it has 750 or more entries on the Australian electoral roll. The surname in your trade mark occurs 7,259 times. It is likely that a significant number of traders with this surname may need to use it in connection with their goods or services.
While I understand FOX has a meaning other than just a surname, this number is still more than 9 times the 750 figure and a very common surname in Australia.
The provisional refusal applied to all of the goods for which protection was sought in Australia.
The Holder provided submissions in response to the s 41 ground for rejection but the examiner was not persuaded. After three examination reports, the Holder requested to be heard on the matter.
The matter came before me, a delegate of the Registrar of Trade Marks, in Canberra on 9 September 2016. Mr. Blake Knowles of Cullens…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Vectura GmbH [2016] ATMO 77
Case: [2016] ATMO 77
Decision Date: 27 September 2016

CaseChat Overview and Summary

This decision concerns an application for an International Registration Designating Australia (IRDA) by Vectura GmbH (the Holder). The dispute centred on whether the word 'fox' was capable of distinguishing the goods for which protection was sought. The Hearing Officer, Katrina Brown, was required to determine if the IRDA should be accepted for extension of protection in Australia.

The primary legal issue before the court was whether the word 'fox', when considered in relation to the specified goods, possessed inherent distinctiveness such that it could function as a trade mark. This involved assessing the various meanings of the word 'fox', its statistical significance in the Australian population, the nature of the goods for which protection was sought, and the common practices of traders in that market.

The Hearing Officer reasoned that while 'fox' has multiple meanings, including that of an animal associated with cunning and resourcefulness, and a surname, its primary meaning in the context of the specified goods was not solely that of a surname. The goods, particularly pharmaceutical preparations for pulmonary delivery and related devices, were found to be specialised and subject to significant regulation under the Therapeutic Goods Act 1989, creating a relatively narrow market. Furthermore, evidence suggested it was not common practice for traders in this sector to use their surname as a trade mark. Considering these factors, and the presumption of registrability, the Hearing Officer concluded that the word 'fox' was inherently adapted to distinguish the specified goods.

Consequently, the Hearing Officer accepted the IRDA for extension of protection in Australia for the goods in Class 5 (pharmaceutical preparations for pulmonary delivery and for the treatment of respiratory and cardiovascular systems) and Class 10 (inhalers, nebulisers, respirators, and associated parts and fittings). The International Bureau was notified of this decision.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

As previously stated ‘fox’ has an SFAS value of 7259. To put that into perspective, the SFAS value of Smith is 114997 and Brown has an SFAS value of 54896. As pointed out by the Holder’s Representative, an SFAS value should be viewed in light of the total Australian population which is currently approximately 24 million.[8] [8] Australian Bureau of Statistics, Population Clock <>The word ‘fox’ has multiple meanings other than that of a surname, including the following which are set out in the Holder’s submissions:any of the various wild flesh-eating mammals of the dog familythe fur of said mammal/sa cunning or sly personto act craftilyto deceive, baffle or trick.[9][9] Hearing submissions [17].The Holder’s Representative states that the primary meaning of ‘fox’ is not that of a surname.[10] In their opinion, in the context of marketing and branding, the word ‘fox’ is associated with the animal and evokes the idea of cunning and resourcefulness in the mind of a consumer.[11] Whilst I would not go quite so far as to say that the word ‘fox’ is primarily a reference to an animal, this meaning may be more commonly attributed to the word by a consumer than some of the alternate meanings of the word. [10] Hearing submissions, Executive summary [3].[11] Hearing submissions [18].At the time of examination, some of the designated goods in this matter were quite broad such as a claim in class 5 for: medical and veterinary preparations and articles. During the course of examination the Holder offered to narrow their specification to:Class 5: Pharmaceutical preparations formulated for pulmonary delivery via inhalation; pharmaceutical preparations for the prevention or treatment of diseases or conditions of the respiratory and cardiovascular systems: none of the aforementioned goods including medicated confectionary. Class 10: Drug delivery devices; inhalers; metered dose inhalers; active dry powder inhalers; nebulisers for respiration therapy; respirators for artificial respiration; parts and fittings for all the aforesaid goods. In the written submissions[12] and also at the hearing, the Holder’s Representative made it plain that their submissions are on the basis of the above goods and not in relation to the broader claims that were made at the time of filing the application. As such, I will proceed on the basis that the goods set out at [21] of this decision are those for which the Holder seeks protection. [12] Hearing submissions, Executive summary [1].The goods for which protection is sought in class 5 are pharmaceutical preparations for the treatment of respiratory and cardiovascular conditions. They are not as commonplace as clothing or confectionery. Nor do they appear to be commonplace medicinal goods such as (for example) ibuprofen or paracetamol. The specialised nature of the goods is supported by the Holder’s assertion that the goods for which protection is sought are generally produced by complex manufacturing processes and require considerable investment on the Holder’s part. The hearing submissions contain the following example of a drug delivery device that the Trade Mark is currently used on:[13][13] Hearing submissions [28].I note that the goods in class 10 for which protection is sought include drug delivery devices. This is a broad claim and could include devices such as needles or syringes which are far less sophisticated drug delivery devices than the above example provided by the Holder. My attention is also drawn to the fact that the goods for which protection is sought are highly regulated. The Therapeutic Goods Act 1989 (‘TGA Act’) governs the manufacture of therapeutic goods in Australia and imposes licensing requirements, periodic reviews and inspections and penalties for non-compliance. These are significant barriers to traders entering the relevant market and as such the market is relatively narrow. In their written submissions for the hearing, the Holder’s Representative also provided a list of manufacturers from the Therapeutic Goods Administration website.[14] The list contains the trading names of 387 manufacturers, although some appear to be duplicates. Of the 387 manufacturers listed approximately 12 clearly incorporate a surname in their trading name. On the basis of this information, it does not appear to be common for traders in these goods to use their surname as a trade mark.[14] Ibid Annexure C. Thus my determination as to whether the word ‘fox’ is capable of distinguishing the goods for which protection is sought is based on the following considerations:the word ‘fox’ has an SFAS value of 7259;the word ‘fox’ has several meanings other than that of a surname;the goods are relatively specialised (with the exception of the broad claim for drug delivery devices);the market for the goods is highly regulated and consequently relatively narrow;it does not appear to be common practice in Australia for traders of the goods to use their surname as a trade mark.Considering all of the above and the presumption of registrability, I find that the IRDA is inherently adapted to distinguish the following goods for which protection is sought: Class 5: Pharmaceutical preparations formulated for pulmonary delivery via inhalation; pharmaceutical preparations for the prevention or treatment of diseases or conditions of the respiratory and cardiovascular systems: none of the aforementioned goods including medicated confectionary.Class 10: Inhalers; metered dose inhalers; active dry powder inhalers; nebulisers for respiration therapy; respirators for artificial respiration; parts and fittings for all the aforesaid goods.DecisionRegulation 17A.24 provides:17A.24 Final decision on examinationThe Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it.The Registrar may accept the IRDA subject to conditions or limitations.The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it, in whole or in part. I accept the IRDA for possible extension of protection in Australia for the goods set out in [29] of this decision. The International Bureau has been notified.Katrina BrownHearing OfficerTrade Mark Hearings28 September 2016

Ratio Decidendi

Legal Principle Established

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