Vifor SA v Meditech Int Pty Limited

[2010] ATMO 1

TRADE MARKS ACT 1995

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

Re:Opposition by Vifor SA to registration of trade mark application 1162350(5) - iq boost - filed in the name of Meditech Int Pty Limited.

Delegate:	Jock McDonagh
Representation:	Opponent Applicant
Decision:	2010 ATMO 1 Section 52 opposition: ss 42(b), 44 and 60 grounds not established Costs awarded against the opponent

Background

1. Meditech Int Pty Limited (“the applicant”) has filed application to register the trade mark, details of which follow:

Application Number:	1162350
Priority date:	22 February 2007
Goods:	Class 5: Pharmaceutical and dietary product, preparations and supplements
Trade Mark:	iq boost
Advertised:	21 June 2007

1. On 20 December 2007, Vifor SA (“the opponent”) filed a notice of opposition pursuant to section 52 of the Trade Marks Act 1995 (“the Act”). The notice specified 12 grounds of opposition, in effect each of the grounds provided by the Act.

2. The matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Sydney on 7 September 2009.  The opponent was represented by Mr Gerard Skelly of Spruson & Ferguson, Patent and Trade Mark Attorneys of Sydney.  The applicant was not represented at the hearing.

3. Three grounds of opposition were relied on at the hearing, being those under sections 42, 44 and 60 of the Act. The opponent did not pursue the remaining grounds. For the sake of completeness, I treat the remaining grounds of opposition as having been abandoned.

   Evidence

4. The evidence filed in these proceedings consisted of a declaration by Gian Trepp, the Vice President of Consumer HealthCare International of Vifor SA.  The declaration was executed on 31 October 2008 and contained 18 exhibits, numbered Vifor-1 to Vifor-18.

5. The applicant did not file any evidence in these proceedings. Indeed, the applicant has not actively participated in this matter at all. However, the applicant has had the opportunity to do so and I am satisfied that the applicant has had a proper chance to put its case. Having chosen a course of action, the applicant must accept any consequences that follow. It is not for me to act as advocate for an unrepresented party.

6. The opponent bears the onus of establishing that the applicant should be refused registration, and in discharging that onus it is the ordinary or civil standard of the balance of probabilities which applies (see Pfizer Inc. v. Karam (2006) 70 IPR 599).

   Discussion

   Section 44

7. The relevant portion of section 44 of the Act states:

   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.

8. Deceptive similarity is defined in section 10 of the Act as follows:

   Definition of deceptively similar

   10. 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.

9. To establish the section 44 ground, the opponent must establish that:

   ·    at the priority date

   ·    there was a substantially identical or deceptively similar trade mark application or registration

   ·    in respect of similar goods or closely related services

   ·    in the name of a person other than the applicant.

10. The opponent relied on its registration 943093 EYE Q in Class 5 (Dietetic substances adapted for medical use, vitamins, dietetic substances for health care) with a priority date of 11 February 2003.

11. The opponent did not contend that the respective trade marks are substantially identical. I agree and so find.

12. In submissions with respect to the issue of deceptive similarity, the opponent cited the relevant authorities, including Justice Windeyer in Shell Company (Australia) Limited v. Esso Standard Oil (Australia) Limited (1961) 109 CLR 407, Justice Kitto in Southern Cross Refrigerating Company v. Toowoomba Foundry Pty Limited (1954) 91 CLR 592 at 594-5, Justice French in Registrar of Trade Marks v. Woolworths Limited (1999) FCA 1020 at paragraph 50, Justices Dixon and McTiernan in Australian Woollen Mills Limited v. F.S. Walton & Company Limited (1937) 58 CLR 641 at 658, Justice Parker in Re Application by the Pianotist Company Limited (1906) 23 RPC 774 at 777.

13. The opponent submitted that the iq and EYE Q components of the parties’ trade marks were phonetically identical and that the applicant’s iq boost goods could be perceived as a product variant of the goods provided under the opponent’s EYE Q trade mark.

14. The opponent stressed, supported by a number of authorities, that trade marks may be regarded as deceptively similar because of aural similarity, even though they may share nothing by way of idea and/or are distinguishable visually. Further, says the opponent, visual impressions are not determinative; radio advertising is significant and transactions for these types of goods can be conducted over the counter and ordered orally.

15. Having regard to the appropriate tests and to submissions by the opponent, and to the evidence in support, I am not satisfied that the applicant’s trade mark is deceptively similar to the opponent’s nominated trade mark. While there is a vague aural similarity between the competing marks, on balance I could not be satisfied that there would be a real tangible danger or likelihood of confusion amongst a substantial number of consumers.

16. I consider that EYE Q and iq sound different. In any event, the addition of the word “boost” is enough to distinguish between the marks; such that EYE Q and “iq boost” would be recollected quite differently.

17. The goods specified for both parties’ trade marks involve pharmaceutical products or health care products. I consider that the potential customer for such products is likely to have made a considered product choice and is not likely to be confused or deceived by minor similarities.

18. I am not satisfied that the opponent has established this ground of opposition.

    Section 60

19. Section 60 of the Act provides:

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

    60. 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.

20. To satisfy section 60 the opponent must establish:

    ·    priority

    ·    reputation acquired in Australia

    ·    because of that reputation the use of the applicant’s trade mark would be likely to deceive or cause confusion.

21. There is no longer a need to establish the substantial identity or deceptive similarity of the trade marks to rely upon this ground of opposition, although such findings could be relevant to determining the issue.

22. The relevant priority date is 22 February 2007. The opponent again relied upon its registered trade mark referred to earlier and used in Australia since 2003.

23. The opponent referred to McCormick & Co Inc v McCormick [2000] FCA 1335 at paragraph 81, where Kenny J discussed the meaning to be attributed to the word “reputation” in section 60. Reputation refers to the recognition by the public generally of the opponent’s trade mark. In McCormick it was permissible to infer reputation from the high volume of sales and advertising expenditure.

24. While the opponent provided confidential evidence of advertising expenditure and sales turnover, I am not satisfied that it is sufficient to meet the inference expounded by Kenny J.

25. With respect to advertising and promotion, the figures provided by the opponent are unhelpful. The figures relate to the period July 2004 to December 2005 and to the period January 2006 to December 2007. Thus it is difficult, in the latter figures, to attribute amounts to the period before the priority date. The figures, while at first blush appear substantial and not insignificant, do not necessarily evidence consumer appreciation of the opponent’s trade mark.

26. Similarly, the sales figures are vague and unhelpful. The periods are listed for 2004/5, 2006 and 2007. The 2007 figures are much smaller than the others, so it might be the case that they reflect sales up to the priority date; however, it is impossible to tell. The figures are quoted in terms of “units”, without a definition. The Trepp declaration does state that the opponent’s goods are sold in containers of 60 or 180 capsules, while there is evidence of goods in liquid form and “chewable” tablets.

27. While I can conclude that the opponent has a real commercial operation and uses its EYE Q trade mark in Australia for dietetic substances and vitamins, I am unable to conclude, on the balance of probabilities, that the advertising and turnover is of such a high volume as to allow me to infer the trade mark had acquired the necessary reputation as at the priority date. Thus I cannot conclude that a significant number of persons were likely to be deceived or confused if the applicant used the applied for trade mark.

28. I am not satisfied that the opponent has established this ground of opposition.

    Section 42(b)

29. The opponent has raised the ground of “contrary to law” as provided in section 42(b) of the Act. Specifically, this ground raises the issue of misleading or deceptive conduct pursuant to section 52 of the Trade Practices Act, 1974, and false or misleading representations under Section 53 of that legislation (together with possible breaches of the corresponding provisions of the Fair Trading Acts in each State).

30. In relation to the present matter, I find that this ground of opposition, insofar as it relies on establishing breaches under sections 52 and 53 of the Trade Practices Act is not made out. Simply stated, section 52 (which prohibits a corporation from engaging in misleading or deceptive conduct) and section 53 (which, inter alia prevents a corporation from falsely representing that it or its goods have specific sponsorship, approval or affiliation) would be contravened if, in offering its goods, the applicant were to represent either directly or indirectly an association between itself and the opponent, or between the parties’ respective goods, when such representation was either likely to mislead or deceive the relevant public or was false. The evidence does not show that the applicant has engaged in any such conduct or that any such representation has been made. Nor am I satisfied that adequate evidence has been provided to establish, either by fact or by inference, that a not insignificant number of persons in the Australian community have been misled or are likely to be misled.

31. Accordingly, the opponent has not shown that use of the applicant’s trade mark would to be contrary to law. I am not satisfied that the opponent has established this ground of opposition.

    Decision

32. Section 55 of the Act provides:

    Unless the proceedings are discontinued or dismissed, 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.

33. I find that none of the grounds of opposition on which the opponent relied has been established.

34. The trade mark application may therefore proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been discontinued or, in the event of a decision from the Court, that the application be subject to that decision.

    Costs

35. The opponent sought its costs. However, since costs usually follow the event, I award costs against the opponent pursuant to the official scale.

    Jock McDonagh
    Hearing Officer
    Trade Marks Hearings
    4 January 2010