Wyeth LLC

[2013] ATMO 59

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1485622(5, 41, 44) - REMISSION POSSIBLE- in the name of Wyeth LLC.

Delegate:	Nicole Worth
Representation:	Applicant: Alison McGinn of Banki Haddock Fiora Lawyers
Decision:	2013 ATMO 59 Ex parte - section 33 proceedings – section 41 - trade mark not capable of distinguishing Applicant’s goods and services – application rejected

Background

1. This is a decision pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’) in respect of an application to register the trade mark detailed below:

   Application Number: 1485622

   Applicant:                  Wyeth LLC (‘the Applicant’)

   Priority Date:  13 April 2012

   Goods:Class 5: Pharmaceutical preparations including pharmaceutical preparations to treat rheumatoid arthritis, ankylosing spondylitis, psoriatic arthritis, juvenile idiopathic arthritis and psoriasis

   Class 41: Medical educational services and pharmaceutical education services including education for health care professionals in relation to the treatment of rheumatoid arthritis, ankylosing spondylitis, psoriatic arthritis, juvenile idiopathic arthritis and psoriasis

   Class 44: Medical information services and pharmaceutical information services including information in relation to the treatment of rheumatoid arthritis, ankylosing spondylitis, psoriatic arthritis, juvenile idiopathic arthritis and psoriasis; medical and pharmaceutical advisory services

   Trade Mark:              REMISSION POSSIBLE       (‘the Trade Mark’)

2. The application was examined and a ground for rejection was raised under section 41 of the Act in the following terms:

   Your trade mark is just the words REMISSION POSSIBLE and you are claiming medical goods and services.

   Remission is, of course, a “temporary decrease or subsidence of the manifestations of a disease” (Macquarie Dictionary). Your mark thus declares that your goods and related services make remission (of a number of diseases) possible.

   Other traders should be able to make that claim in connection with goods or services similar to yours.

3. Despite submissions from the Applicant that the Trade Mark was a skillful allusion to the goods and services and that therefore other traders would not have a bona fide need to use it, the examiner maintained the ground for rejection. As a consequence the Applicant exercised its right to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, on 20 June 2013. Ms Alison McGinn of Banki Haddock Fiora Lawyers filed written submissions for the Applicant and spoke at the hearing on its behalf.

Section 41

1. The now repealed form of section 41 of the Act[1], which applies to this application, relevantly provided:

   (2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

   Note:  For goods of a person and services of a person see section 6.

   (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   [1] Section 41 was amended pursuant to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, which came into effect on 15 April 2013. Applications filed prior to then are governed by the previous version of section 41; see Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.

2. Subsection 41(4) stated that if the Registrar was unable to decide, on the basis of inherent adaptation alone, that a trade mark was capable of distinguishing designated goods or services then subsections 41(5) or 41(6) apply. Subsections 41(5) and 41(6) contemplated acquired distinctiveness on the basis of use or (in the case of 41(5)) intended use of a trade mark. In this case there is no scope for the application of subsections 41(5) or 41(6) since there is no evidence before me of use or intended use by the Applicant. The only matter to be decided therefore is the extent to which the Trade Mark is inherently adapted to distinguish the designated goods and services pursuant to subsection 41(3).

Consideration

1. Inherent adaptation to distinguish is “something which depends on the nature of the trade mark itself”[2] and remains unaffected by either use or intended use. Drawing upon the words of Lord Parker in Registrar of Trade Marks v W & G Du Cros Limited[3] Kitto J, in Clark Equipment Co v Registrar of Trade Marks[4], described the test for inherent adaptation as:

   [T]he question whether a mark is adapted to distinguish [is] to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of the words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [2] Burger King Corp v Registrar of Trade Marks [1973] HCA 15; (1973) 128 CLR 417.

   [3] (1913) RPC 216.

   [4] [1964] HCA 55; (1964) 111 CLR 511.

2. In this regard the Applicant’s submissions are, in summary:

   ·    “[T]he trade mark is not a commonplace or generic description that is required by other traders.”

   ·    “[T]he mark REMISSION POSSIBLE alludes to a characteristic of the goods and services, and of itself, without more, does not have a direct descriptive meaning in relation to the Goods and Services. Many trade marks allude to a characteristic of goods or services and are registrable because they do not directly describe the goods or services. We submit that the trade mark REMISSION POSSIBLE is a skilful allusion to a quality of the Goods and Services and is therefore registrable.”

   ·    “Pharmaceutical goods, educational services, and information services cannot be described by the term “remission possible”. While the word conjures that positive qualities may arise in connection with the Goods and Services, the Goods and Services themselves cannot be described by the term REMISSION POSSIBLE. On its own, the mark does not make any sense in relation to the Goods and Services. The mark…is one step removed from describing them and should therefore be registrable in accordance with the test in TGI Friday’s Australia Pty Ltd v TGI Friday’s Inc.[5]”

   ·    “The words REMISSION POSSIBLE allude to a characteristic of the Goods and Services, and ‘suggest what the product is without actually being descriptive of it’ (BP p.l.c. v Woolworths Limited[6]). Other honest traders, acting with bona fide motive, would not require the use of the REMISSION POSSIBLE mark in the ordinary course of trade.”

   ·    “The words REMISSION POSSIBLE are clearly a reference to the “Mission Impossible” television and movie series and are a play on that name. Because of this secondary reference and meaning behind the words, we submit that this further increases the distinctiveness of the Applicant’s mark. The allusion to “Mission Impossible” means that rather than thinking of the single words REMISSION and POSSIBLE, the mark will conjure the action series in the mind of consumers and therefore the mark has a new level of distinctiveness above just the two words on their own.”

   ·    [With reference to Proctor & Gamble v OHIM, ‘Baby-Dry’[7]] “[T]he ‘syntactically unusual juxtaposition’ of the words REMISSION POSSIBLE is not familiar in the English language for designating the Goods and Services or ‘for describing their essential characteristics’. Pharmaceutical goods and related services are not commonly referred to by the words REMISSION POSSIBLE and this supports our position that the mark is inherently capable of distinguishing the Goods and Services.”

   ·    [With reference to Mark Foy’s Ltd v Davies Coop and Co Ltd, ‘Tub Happy’[8]] “[W]hen viewing the Applicant’s mark, in order to identify any meaning, a second line of enquiry must be undertaken by the consumer and therefore the words together do not have an ordinary meaning in relation to the Goods and Services and the mark is therefore capable of distinguishing the Goods and Services.”

   ·    “A Google search for the words ‘remission possible’ reveals that other traders do not use the term for their own similar goods and services.”

   [5] [2000] FCA 720; 48 IPR 513.

   [6] [2004] FCA 1362, at paragraph 20.

   [7] ECJ Case No. C-383/99 (5 April 2001).

   [8] [1956] HCA 41; (1956) 95 CLR 190.

3. I am not persuaded by any of these submissions that the trade mark is sufficiently inherently adapted to distinguish either the pharmaceutical preparations or the education and information services specified in the application.

4. I consider the meaning of the expression “Remission Possible” is readily apparent. “Remission” and “Possible” are defined by the Macquarie Dictionary[9] as:

   Remission: a temporary decrease or subsidence in manifestations of a disease.

   Possible: that may or can be, exist, happen, be done, be used etc.

   [9] Macquarie Dictionary Online © Macmillan Publishers Australia 2013.

5. Considered in the context of the goods and services specified in the application the expression denotes pharmaceutical preparations and education and information services which make a temporary decrease or subsidence in the manifestations of a disease possible (or which aim to do so). It is not necessary to institute a search for meaning in order to arrive at this conclusion, as per Tub Happy.[10] The Trade Mark is rather a straightforward articulation of the goods’ and services’ purpose, arrived at by applying the commonly understood meaning of “possible” to the commonly understood condition “remission”.

   [10] supra

6. Nor am I persuaded that the Trade Mark is merely suggestive or allusive, as per Baby-Dry. As explained above, I consider the meaning of the Trade Mark readily apparent. I also mention that the “lexical invention” considered to subsist in the Baby-Dry trade mark was sufficient only to exclude it from being a mark which was exclusively descriptive.[11] I do not equate this with “inherently adapted to distinguish” under section 41(3) of the Act, which excludes not only trade marks with no inherent adaptation to distinguish (as an exclusively descriptive one would be) but also those that are to some extent inherently adapted to distinguish. Should any lexical invention subsist in the expression “Remission Possible” (and I am unconvinced that it does), then I consider that it would render the expression only to some extent inherently adapted to distinguish.

   [11] That is, the trade mark was found not to be precluded from registration by virtue of Article 7(1)(c) of the Community Trade Mark Regulations (CTMR), which provides that trade marks shall not be registered if they consist exclusively of signs or indications which designate, inter alia, the kind, quality, quantity, intended purpose, value, geographical origin or other characteristic of the goods or services.

7. Submissions to the effect that the Trade Mark is not directly descriptive of the specified goods and services, or that it is not in common use, do not assist the Applicant. This is because, firstly, directly descriptive or commonly used trade marks are most likely to fall into the category of marks which have no inherent adaptation to distinguish, as contemplated by subsection 41(6). Secondly, it is because the inquiry under section 41 is not whether the Trade Mark directly describes the goods and services, or whether it is in common use (although a positive finding of such is likely to result in the Trade Mark being deemed non-distinctive). Rather, it is whether the Trade Mark does or will distinguish the specified goods and services from those of other traders, tested by reference to an evaluation of whether other traders are likely to think of and desire (not “need”) to use the Trade mark in respect of their own goods and services, without improper motive.

8. To this end I consider the inherent meaning of the Trade Mark, as indicated by the dictionary definitions of the words (as well as their commonly understood meanings, irrespective of dictionary definitions), a sufficient basis upon which to make that evaluation. Based upon its inherent meaning it is likely that other traders dealing in similar goods and services will wish the use the Trade Mark. It is not necessary to show actual use of it by other traders in order to conclude that it is likely other traders will wish to use it. However I have also perused the examiner’s internet research which reveals the following examples of use:

   ·    Information articles with the titles: ‘Rheumatoid Arthritis: Remission Possible in this Invisible Disease’, ‘Arthritis remission possible, conference told’, ‘Is total remission possible for PA?’, ‘Is Psoriasis Remission Possible?’, ‘Functional Remission Possible in Early RA with MTX’.

   ·    Use in the phrases ‘Biologic response modifiers are making remission possible’, ‘Now, is drug-free remission possible for them?’, ‘Is remission possible for your ___’.

9. All but one of these examples clearly predate the priority date of the application, and there is no indication that the use in the remaining example is as the result of any impropriety. On the contrary, the author of the words appears to be actuated only by proper motives in making use of the expression for its ordinary significance. Consequently, in addition to the inherent meaning of the Trade Mark, I find that the use of it by the public lends weight to the evaluation that other traders are likely to think of and desire to use the words “Remission Possible” in relation to their own pharmaceutical preparations and education and information services.

10. Lastly, whilst I acknowledge the possibility of the Trade Mark bringing to mind the Mission Impossible television and movies series, I do not consider it an obvious reference. Pharmaceutical preparations, and the type of education and information services specified in the application, are almost entirely removed from an action series about the exploits of a secret agent. As such I am unconvinced that the Trade Mark would be taken as a reference to ‘Mission Impossible’ by any significant number of consumers.

11. I am satisfied that the expression “Remission Possible” has a transparent meaning in respect of pharmaceutical preparations and education and information services; one which renders it likely to be desired for use by other traders. Consequently, I am not satisfied that the trade mark is inherently adapted to distinguish the Applicant’s goods and services form those of other traders.

Decision

1. Section 33 of the Act relevantly provides:

   (3) If the Registrar is satisfied that:

   (a) the application has not been made in accordance with this Act; or
   (b) there are grounds for rejecting it;

   the Registrar must reject the application.

2. I have found that the Trade Mark is not sufficiently inherently adapted to distinguish the Applicant’s goods and services from those of others. Since there is no scope to apply the provisions of subsections 41(5) or 41(6), I accordingly reject trade mark application number 1485622.

Nicole Worth
Hearing Officer
Trade Marks Hearings
29 July 2013