Zeneca Limited v Bayer AG

[2000] ATMO 93

TRADE MARKS ACT 1995

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

Re:Opposition by Zeneca Limited to registration of trade mark application 702538(5) - IMPULSE- filed in the name of Bayer AG.

Background

Bayer AG (the applicant) filed this application on 15 February 1996 in respect of 'Preparations for killing weeds and destroying vermin, insecticides, fungicides, herbicides' in class 5 for the word trade mark IMPULSE. The application was accepted following examination without objection and advertised as accepted in the Australian Official Journal of Trade Marks of 2 January 1997. Zeneca Limited (the opponent) filed a notice of opposition to this acceptance on 2 April 1997.

The notice of opposition lists wide ranging grounds of opposition under s.57 of the Act in respect of s.41, s.42(b), s.43 and s.44, and also grounds under s.58, s.59, s.60 and s.62. The opponent filed its evidence in support of the opposition and the applicant responded with its evidence in answer.

Both parties were then given the opportunity to be heard in the matter and, after a deferment, the hearing took place in Canberra on 24 May 2000. Mr Trevor Stevens of Davies Collison Cave represented the applicant whilst the opponent was not represented.

The Evidence

The evidence in support was filed and served by 5 March 1999 and consists of a single declaration, from John Sandow (the Sandow declaration) with two exhibits 'JS-1' and 'JS-2'. This declaration goes to show that the opponent, through a licensed distributor in Australia, has registered and used the trade mark IMPACT, which it claims is confusingly similar to the present application.

The Sandow declaration goes to show that the opponent has licensed Crop Care, a business owned by Crop Care Australasia Pty Limited, to use its IMPACT trade mark in respect of insecticides, fungicides and herbicides. Mr Sandow is a Manager at Crop Care. The trade mark was launched in Australia by Crop Care in 1992, although the opponent's registration, numbered 384229, in respect of 'Insecticides, fungicides and herbicides' goes back to 22 November 1982. Sales figures for the financial years from 1992/93 to 1997/98 inclusive are also provided. Distribution of the IMPACT branded goods occurs through Crop Care's wide agency network, including well known stock and station agents - such as IAMA Limited, Elders limited, Combined Rural Traders and Wesfarmers Dalgety. Several documents within both exhibits provide technical information for the use of the IMPACT goods. The declaration also contains some argued submissions concerning the similarity of the words IMPACT and IMPULSE as trade marks, the similarity of the respective goods of the applicant and of the opponent and the likelihood of deception or confusion among prospective purchasers.

The evidence in answer to this opposition was filed and served by 2 December 1999. It consists of a single declaration from Rohan Charles Singh, a solicitor employed by Davies Collison Cave, the attorneys for the applicant (the Singh declaration) with exhibit 'RCS1'. To support the applicant's case, the exhibits to this declaration show the co-existence of the trade marks IMPACT and IMPULSE in various overseas jurisdictions.

The exhibit to the Singh declaration goes to show that both IMPACT and IMPULSE trade marks are registered in Germany and the Benelux countries for class 5 goods. Other searches in exhibit 'RCS1' indicate that the trade mark IMPULSE can be found on the International Register and also those in Austria, France, Denmark, Italy, Switzerland and Spain. Unfortunately, no indication is available on the status of these entries or the class for which application had been made. The corresponding search for the IMPACT trade mark shows the mark on the national registers in the United States of America and the United Kingdom.

Submissions

As mentioned above, the opponent chose not to be represented at the hearing, neither did it provide written submissions to support its case. The applicant, through its attorney, opened its submissions by declaring that the only grounds of opposition that could gain any support whatsoever from the evidence are those under s.44 and/or s.60 and it was only those grounds that would be addressed.

Mr Stevens then conceded that the goods of interest for both parties are either the same or at least similar. He added that the marks IMPACT and IMPULSE by any standard could not be considered substantially identical, and that he intended to confine his submissions to the issue of deceptive similarity of these marks.

Mr Stevens first directed my attention to the definition of 'deceptively similar' as found at s.10 of the Act and then to case law where this concept has been discussed. Referring to Australian WoollenMills v F. S. Walton & Co Ltd (1937) 58 CLR 641, Mr Stevens submitted that the judgement focussed there on considerations that are extremely pertinent in the present case. He took me through the steps outlined there, including not comparing the marks side by side, assessing the net impression of the opponent's mark on prospective customers, making allowance for the spoken description of the mark, considering both the sound and meaning of the mark and assessing the impact of the mark on the average purchaser. The attorney also sought to rely on two other cases in relation to these factors[1].

[1] Gardenia Overseas Pty Ltd v The Garden Co Ltd 29 IPR 485; and

Mr Stevens then provided definitions for the words IMPACT and IMPULSE from the Macquarie Dictionary (Second Edition), and argued why these words as trade marks did not fulfil the tests to be considered to be deceptively similar. He discussed the primary meanings of the words IMPACT and IMPULSE, and also submitted that words of two syllables and prefix IMP- are very common. He canvassed several other issues, including the idea that the soft sounding prefix IM- automatically placed greater emphasis on the remainder of the words, -PACT and -PULSE, which themselves had separate dictionary meanings.

Mr Stevens claimed that the allegations made in the opponent's declaration are inconsistent. On the one hand, he said, the opponent has claimed that it has launched a very effective marketing campaign and that the impact of this venture on the relevant purchasing public is convincing. Yet, on the other hand, the opponent has claimed that 'many farmers would have read or heard of IMPACT and its usage and will be left with a general but not precise recollection of the name. Given the similarities of the products and the names IMPACT and IMPULSE I believe many will confuse the two', he added.

Mr Stevens submitted that a monopoly, that could exclude use of IMPULSE as a trade mark based on ownership of IMPACT, is not warranted. He claimed that this opposition is a good example of an opponent endeavouring to 'enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure'[2]. In conclusion, the attorney requested costs on behalf of the applicant.

[2] Joseph Crosfield & Sons Ltd's Application (1909) 26 RPC 837 at 854.

Discussion

The opponent, in the evidence in support, provides no material that could go toward establishing opposition grounds under s.41, s.42(b), s.43, s.58, s.59, or s.62. Thus, I find that opposition in terms of those grounds to be not successful. I now turn my attention to the remaining opposition grounds relied on in the notice of opposition, namely s.44 and s.60 of the Act.

(a) Section 44 - Identical etc. trade marks

Legislation relevant to a comparison of trade marks involving goods rather than services under this section of the Act reads:

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.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

Subsections (3) and (4) also find no relevance here - being means to register a conflicting trade mark by establishing one of two possible circumstances. These being that either continuous use of the applied for mark has occurred from a time prior to the initial blocking registration or, alternatively, that both trade marks have concurrently been used in an honest manner for some time already without untoward confusion.

The three issues to be assessed under s.44 involve the degree of similarity of the respective trade marks, the degree of similarity of the respective goods of both parties and the priority dates for both the present application and any alleged blocking trade marks. The last two of these three considerations the applicant has, I believe, already conceded.

The present application for the mark IMPULSE was made on 15 February 1996, in respect of 'Preparations for killing weeds and destroying vermin, insecticides, fungicides, herbicides'. The trade mark relied upon by the opponent - IMPACT, numbered 384229, - is registered from 22 November 1982 in respect of 'Insecticides, fungicides and herbicides'. Clearly the opponent's mark has the earlier date and the goods for both parties' marks encompass identical items in class 5. The remaining issue concerns the degree of similarity of the respective trade marks IMPACT and IMPULSE themselves. This test, as outlined in s.44, requires me to decide whether or not the applicant's mark is either substantially identical with, or deceptively similar to the opponent's mark.

Mr Stevens has submitted that the marks could not be considered substantially identical and I am in full agreement with that opinion. A side by side comparison immediately identifies totally different endings for the words, being -ACT and -ULSE. The fact that they share the first three letters, IMP-, in common is not sufficient, in my opinion, to find the words to be substantially identical.

The Act provides a definition for 'deceptively similar' at s.10 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.

Justice French has also recently discussed the application[3] of this phrase in relation to s.44 in the following terms:

[3] Registrar of Trade marks v Woolworths Limited 45 IPR 411 at 426

The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring”.

The accepted test for deceptively similar trade marks, referred to by the applicant's attorney at the hearing, is found in Australian Woollen Mills v F. S. Walton, supra, at 658 in the judgement of Dixon and McTiernan JJ and reads:

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. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard. Evidence of actual cases of deception, if forthcoming, is of great weight.

The effect or impression of the opponent's IMPACT mark, which is retained in the mind for later comparison, must be considered from a variety of standpoints. Any of the possible similarities involving visual, aural, spoken description, idea, meaning or contextual aspects must be assessed against the present application. The opponent, in its evidence, directed my attention to a list of five similarities between the words IMPACT and IMPULSE that, it alleged, called for a finding that the trade marks are deceptively similar. These factors are:

• Both words consist of two syllables.

• Both begin with the syllable IMP-.

• Both words denote a concussive event.

• Both words appear as a synonym for each other in the Macquarie Concise Thesaurus.

• As trade marks, both words convey the impression of sudden and significant effect on the target diseases.

At the hearing, Mr Stevens sought to counter these arguments with the following reasoning. Firstly, he directed me to the Macquarie Dictionary Second Edition (MD2) to the pages containing the definitions for both IMPACT and IMPULSE, and the pages between, to demonstrate the prevalence of words of two syllables beginning with IMP-. The list is extensive. He then reduced this set of words in terms of only those which have a meaning that involves movement, force, explosion or collision. This final list amounted to six words between the entries for IMPACT and IMPULSE. Mr Stevens sought to counter the opponent's argument based on the entries in the Thesaurus with the entries in MD2. Here, he demonstrated that neither of the words appeared within the definitions of the other. Mr Stevens then proceeded to consider the primary meanings of the two words and present submissions relating to the opponent's allegation that both words 'denote concussive events'. He asserted that one had to 'look fairly hard' to find such a direct meaning.

I am inclined to accept Mr Stevens' argument in relation to the similarity involving two-syllable words beginning with IMP-. Alone, I believe, this is not a telling factor. The numerous entries for such words in MD2 support this conclusion. I am, in fact, more interested in the net effect or impression retained of the opponent's IMPACT mark from a visual or aural perspective, compounded by any similarity of meaning, for a comparison with the presently applied for mark.

In my view, the opponent's IMPACT mark will be recalled with the concept of a 'concussive event' as suggested by the opponent. I am not so convinced that the word IMPULSE evokes a sufficiently similar effect. The primary meaning given in MD2 for 'impulse' is 'the inciting influence of a particular feeling, mental state'. The second listed meaning being 'sudden involuntary inclination prompting to action, or a particular instance of it'. This type of atmosphere or impression of the word, to my mind, tends to outweigh the definition found in the study of physics for 'impulse', where 'impulse' finds a definition of the product of an impelling force and the time for which it acts. In general, I believe, the thought of 'inciting influence' or 'involuntary inclination prompting to action' - an acting on impulse by an individual - will be the prevailing concept for the word. To find that the marks are deceptively similar, I need to assess that there is a likelihood that a 'real tangible danger' of deception or confusion exists. Even allowing for an imperfect recollection of the opponent's IMPACT mark, I believe that the visual and aural differences between IMPACT and IMPULSE will be sufficient to alert a prospective purchaser that the first mark seen was not IMPULSE. The congruence of the first three letters of both words may produce a momentary speculation in the minds of purchasers but not sufficient, in my opinion, to lead to a real likelihood of confusion of the marks.

Thus, despite the elements of similarity between these two words - being the IMP- beginnings of the words, and the synonyms found in the Thesaurus - I do not believe that sufficient similarity exists for me to find that there is a 'real tangible danger'[4] that a 'substantial number'[5] of 'ordinary'[6] purchasers of the goods will be confused or deceived.

[4] Registrar v Woolworths, supra.

[5] Smith Hayden & Co.Ltd's Application (1946) 63 RPC 97 at 101

[6] Australian Woollen Mills v F. S. Walton, supra

This being the case, I am directed to find that the respective marks are not deceptively similar and that the ground of opposition taken under s.44 has not been established.

(b) Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia

For this ground of opposition, the legislation reads:

60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a) it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had 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.

Note 1:  For deceptively similar see section 10.

Note 2:  For priority date see section 12.

The first consideration here, found in s.60(a), concerns a finding of either substantial identity or deceptive similarity between the respective marks of the applicant and of the opponent. From the discussion concerning s.44 above, I have already determined that question in favour of the applicant. Thus, in like manner, I find that this ground of opposition is not established.

Conclusion

From the foregoing, I have found that of the eight grounds of opposition raised in the notice of opposition, only two grounds, those under s.44 and s.60, were supported by the opponent's evidence. However, neither of these grounds has been established. Thus, in my capacity as the delegate of the Registrar in this case, I dismiss the opposition and direct that, on payment of the registration fee, this trade mark application may proceed to registration.

Costs

At the hearing, Mr Stevens requested costs on behalf of the applicant. The applicant having succeeded in this matter is entitled to its costs. Thus, I award costs against Zeneca Limited, the opponent, in accordance with the Official scale.

Don Nancarrow
Hearing Officer

24 August 2000

Pianotist Company Ltd's Application (1906) 23 RPC 774.