Innogenetics Nv HC Wellington AP 233/00

[2001] NZHC 324

IN THE HIGH COURT OF NEW ZEALAND
WELLINGTON REGISTRY AP 233/00

UNDER The Trade Marks Act 1953

IN THE MATTER of an appeal from the decision of the Assistant Commissioner of Trade Marks dated 3 October 2000.

AND

IN THE MATTER of New Zealand Trade Mark application number 271332

BETWEEN INNOGENETICS NV
Appellant

Hearing: 1 May 2001

Counsel: P C Dengate Thrush for the Appellant

Judgment: 14 May 2001

ORAL JUDGMENT OF GODDARD J

[1] This is an appeal from a decision by the Commissioner of Trade Marks (“the Commissioner”) dated 22 April 1999.

[2] The application No. 271332 was for “LIA”, in Class 5, for pharmaceuticals; diagnostic products for medical use; hygienic products; substances for medical use. The application, which was made on 6 January 1997, stated that the mark was to be used by the proprietors (being the applicant). On 15 January 1997 the Principal Trade Mark Examiner wrote on behalf of the Commissioner to the applicant’s solicitors advising:

“I do not consider the mark acceptable for registration because it is not distinctive in relation to the goods. The letters LIA have a number of meanings in the field of medicine. See attached copy of the Acronyms, Initialisms & Abbreviations Dictionary.

Registration of this trade mark could disadvantage other business people who may legitimately want to use the mark.”

[3] Following further formalities, the appellant’s solicitors wrote seeking Part A registration on the basis that “LIA” was a pronounceable and meaningless word and should meet the requirements for registration. That advice was not however accepted by the Commissioner. On 21 January 1998, formal objection to registration in either Part A or Part B was advised to the appellant’s solicitors on the following grounds:

“. . . the application is directed to a combination of letters not in themselves able to be distinctive.

The mark is not inherently adapted to distinguish the applicants goods from those goods of other proprietors in the same trading channel, nor is it capable of distinguishing the applicants goods from those other traders in the agricultural machinery/implement field. As such the applicant is not entitled to the grant of monopoly which prevents other traders from using the letters LIA in the marketplace.”

[4] The appellant’s solicitors responded, refuting these stated grounds of objection. On 3 October 2000 the Commissioner’s decision was delivered by the Assistant Commissioner of Trade Marks refusing the application.

The Legislation

[5] The relevant sections are found in that part of the Trade Mark Act 1953 dealing with Registrability and Validity of Registrations. Section 14 provides for distinctiveness as a requisite for registration in Part A. Section 14(1)(c), (d) and (2) specifically provide as follows:

“(1) In order for a trade mark (other than a certification trade mark) to be registrable in part A of the register, it must contain or consist of at least one of the following essential particulars:

. . .

(c) An invented word or invented words:

(d) A word or words having no direct reference to the character or quality of the goods [or services], and not being according to its ordinary signification a geographical name or a surname:

(2) for the purposes of this section ‘distinctive’ means adapted, in

relation to the goods . . . in respect of which a trade mark is registered or proposed to be registered, to distinguish goods . . . with which the proprietor of the trade mark is or may be connected in the course of trade from goods . . . in the case of which no such connection subsists, . . .”

[6] Section 15 provides that the capability of distinguishing goods is requisite for registration in Part B. Specifically, s 15(1) and (2)(b) provide as follows:

“(1) In order for a trade mark to be registrable in Part B of the register it must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, . . .

(2) In determining whether a trade mark is capable of distinguishing as aforesaid the Commissioner or the Court may have regard to the extent to which -

. . .

(b) By reason of the use of the trade mark or of any other circumstances, the trade mark is in fact capable of distinguishing as aforesaid.”

[7] Section 16 provides for the prohibition of registration of deceptive, confusing or scandalous matters. Specifically s 16(1) provides as follows:

“(1) It shall not be lawful to register as a trade mark or part of a trade mark any . . . matter the use of which would be likely to deceive or cause confusion . . .”

The Decision

[8] The grounds upon which the Assistant Commissioner of Trade Marks refused the appellant’s application can be summarised as follows:

[9] First she found that “LIA” could not be considered a “word” and therefore s 14(1)(c) and (d) of the Act did not apply.

[10] Secondly, she found the mark was not a “distinctive sign” for the purposes of s 14(e) because it lacked “the level of inherent distinctiveness required for registration”. In this regard she referred to and relied upon the decisions in W & G du Cros Ltd’s Application (1913) 30 RPC 660, 672 and Smith Kline & French Laboratories Ltd’sApplication [1976] RPC 511, 527. In support of her finding that “LIA” was not a distinctive sign the Assistant Commissioner pointed to the following examples of usages:

Leukaemia-Associated Inhibiting Activity [Medicine]

Liposome Immunoassay [Clinical Chemistry]

Liver Infusion Agar [Germination medium]

Luminescence Immunoassay [Clinical Chemistry]

Lymphocyte-Induced Angiogenesis [Immunology]

[11] The above “acronyms” or abbreviations are listed in the Acronyms, Initialisms & Abbreviations Dictionary (1994). The existence of these common abbreviations or acronyms, with a number of meanings and applications in the fields of medicine and medical diagnostics, clearly persuaded the Assistant Commissioner that the mark must be descriptive of and therefore non-distinctive in relation to the goods specified in the appellant’s application, given the pharmaceutical, diagnostic and medical nature of those goods.

[12] In addition, she found THAT “LIA” had no factual distinctiveness; nor was it adapted so as to distinguish the appellant’s goods from those of other traders in the same fields.

[13] Significantly however the Assistant Commissioner did not refer to or make a finding under s 16 of the Act, which relates to the likelihood of deception or confusion caused by use of the mark.

[14] In respect of Part B eligibility for registration, the Assistant Commissioner pointed to a “lack of inherent distinctiveness”, rendering the mark ineligible for either Part A or Part B registration. Once again, she found the mark not capable of distinguishing the appellant’s goods from those of other traders and therefore not eligible for Part B registration on that ground either.

[15] She concluded with some discussion on the issue of previous registrations of 3-letter marks in capitals, observing that the Patent Office is not bound by previous registrations, as each mark must be assessed on its own merits. She reiterated her fundamental finding that:

LIA is descriptive in relation to the goods specified by the applicant, and is therefore non-distinctive in relation to those goods.

Grounds of Appeal

[16] The appellant advanced five grounds of appeal.

[17] First, that “LIA” is a registrable sign (word) in accordance with s 2 of the Act, and the Assistant Commissioner had given no reasons for not considering it to be so.

[18] Secondly, that “LIA” is a distinctive mark, being an invented word in terms of s 14(c) and thus eligible for registration in Part A; or, is capable of distinguishing and thus being eligible for registration in Part B.

[19] Thirdly, that “LIA” is a word bearing no direct reference to the character or quality of the goods for which it is to be registered, in terms of s l4(d).

[20] Fourthly, that whilst “LIA” may be a common abbreviation or acronym with a number of meanings in the fields of medicine and medical diagnostics, this does not mean it lacks distinctiveness nor is capable of distinguishing as it does not describe any of the goods of the appellant. The mere fact that “it is an acronym for a number of medical or medical diagnostic things is not a hindrance to registration. Registration will not affect any bona fide use of “LIA” as an acronym as the use of such an acronym is descriptive and not trade mark use.

[21] Fifthly, the Assistant Commissioner had not placed sufficient weight on previous acceptances of trade marks of this type and erred in deciding previous marks did not have the same descriptiveness as “LIA” was said to have.

Discussion

[22] In respect of the first ground of appeal, Mr Dengate Thrush correctly submitted that the Assistant Commissioner has given no reasons to support her conclusion that “LIA” is not a word. The mark certainly contains only three letters. “LIA”, which are in capital. That is not however conclusive of the situation and there is no evidence that “LIA” is not a word or that it stands for anything relating to the appellant’s business. The appellant’s solicitors have argued that it is simply an invented word which is quite meaningless and has no direct reference to the goods in respect of which its registration is sought. In this regard, the appellant’s solicitor, Mr McCabe, earlier wrote to the Commissioner on 1 July 1997 stating:

“The mark is . . . a pronounceable word and, like every word, is made up of a number of letters. HERO is no less an eligible trademark by reason of its consisting of four letters which could well be an abbreviation for many things.”

[23] In the absence of any reasons by the Assistant Commissioner as to why “LIA” is not simply a meaningless and invented word. I see no reason to doubt the submissions of the appellant’s solicitors and counsel on this issue. I find no impediment in reading the view that “LIA” is simply a word, and must be so considered for the purposes of s 14(1)(c) and (d) of the Act.

[24] Turning to the second ground of appeal, it is clear that the Assistant Commissioner relied largely upon the use of the mark “LIA” as an acronym or abbreviation in medical and medical diagnostic fields as evidence that it must be descriptive of the appellant’s goods and therefore non-distinctive for the purposes of s 14(1)(e). This approach led her to the conclusion that “LIA” should not be registrable, because other traders in the fields of medicine and medical diagnostics are likely to desire in the ordinary course of their business to make use of “LIA” in connection with their goods or services. However, none of the usages cited by the Assistant Commissioner in her decision are themselves registered trade marks. Nor do any of those usages relate to goods or a class of goods in any distinctive way. The usages are no more than convenient acronyms or abbreviations with multiple applications and numerous different meanings in the fields of medicine and medical diagnostics. “LIA” can have no direct reference to the appellant’s goods for s 14(1)(d) purposes. I accept also that the mark appears to lack the capacity to distinguish or describe the appellant’s goods in terms of s 14(1)(d). There is not, in the words of the test in Mark Foy’s Ltd v Davies Coop & Co Ltd (1965) 1 A IPR 470:

“. . . the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess.”

[25] Furthermore, registration of the word for use by the appellant is unlikely to cause any confusion or deception and I find it significant that the Assistant Commissioner made no such finding under s 16.

[26] I also note that the fact of registration of “LIA” for use by the appellant will not affect the already existing or other bona fide use of “LIA” as an acronym or abbreviation in the medical or medical diagnostic fields. In those fields the name of goods are being used in short for convenience sake, not as trade marks.

[27] The situation is totally different to that which concerned the Assistant Commissioner of Trade Marks in STC’s Application 15 IPR 419. In STC, the Trade Mark “PDMX” was sought in Part A of the register for application as a trade mark for a programmable digital multiplexer. This is a type or class of equipment used in electronic communications in computer networks: thus the initials “PDMX” are not only an acronym for the goods concerned but also descriptive of them. Programmable digital multiplexers are a class of goods frequently used in the computer industry and the acronym “PDMX” is also frequently used in the industry to describe that particular class of equipment.

[28] Having found the above errors of approach in the Assistant Commissioner’s decision concerning the application of ss 14(1)(c) and (d) in relation to the appellant’s application, there is no need for me to determine the remaining grounds of appeal. The errors of approach are fundamental. The appellant’s application is entitled to succeed in either Part A or Part B. As the appellant sought registration in Part B an order will be made accordingly.

Judgment

[29] The appeal is allowed and application No. 271332 is granted. The appellant having been successful is entitled to costs, which are allowed in Category 2B.