Application No. 2497 of 2000
IN THE MATTER of the Trade Marks
Ordinance (Cap. 43)
AND
IN THE MATTER of an application for the
registration of the mark :-
in Part A of the register in Class 5 by
Dr Willmar Schwabe GmbH & Co.
AND
IN THE MATTER of an opposition by
Warner-Lambert Company LLC
DECISION
OF
Miss Lavinia Chang acting for the Registrar of Trade Marks after a hearing on 13 May 2004.
Appearing
:
Mr Gary Kwan of counsel, instructed by Messrs Richards Butler on behalf
of the applicant, Dr William Schwabe GmbH & Co.
:
Mr Ling Chun Wai of counsel, instructed by Messrs Baker & McKenzie on
behalf of the opponent, Warner-Lambert Company LLC
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On 9 February 2000 (the “relevant date”), Dr Willmar Schwabe GmbH & Co., of
Willmar-Schwabe-Strasse 4, 76227 Karlsruhe Germany (the “applicant”) applied to register
the mark NEUROSTAN (the “suit mark”) in Part A of the register under the provisions of the
Trade Marks Ordinance, Cap 43 (the “Ordinance”), in Class 5 in respect of
psycho-pharmaceutical preparations. The suit mark was accepted for registration after
examination and was advertised in the Government of the Hong Kong Special Administrative
Region Gazette on 3 November 2000 for the purpose of opposition.
Notice of opposition
2.
Warner-Lambert Company (“WLC”) a corporation organized and existing under
the laws of the State of Delaware, United States of America, filed a notice of opposition
against the application on 28 March 2001. By a Certificate of Conversion issued in the State
of Delaware, WLC was converted into a limited liability company and renamed
Warner-Lambert Company LLC. By an order dated 30 December 2003 issued by the
Registrar of Trade Marks in these proceedings, Warner-Lambert Company LLC was
substituted for WLC as opponent.
3.
Warner-Lambert Company LLC (the “opponent”) pleads, inter alia, that it is the
proprietor of “NEURONTIN” Trade Mark No. 04881 of 1992 in respect of medicinal and
pharmaceutical preparations included in Class 5 (the “opponent’s trade mark”). The
opponent pleads the following grounds of opposition under the Ordinance :
y
that the suit mark is deceptively similar to its trade mark and has been applied
for in respect of the same goods or goods of the same description.
y
section 12(1) by reason that use of the suit mark would be likely to deceive
and/or would be disentitled to protection in a Court of justice and/or would be
contrary to law or morality.
y
sections 9 and/or 10 by reason that the suit mark is not a registrable trade mark.
y
section 2 by reason that the suit mark is not a trade mark as defined under that
section.
y
section 23, by reason that the suit mark is deceptively similar to the opponent’s
trade mark registered in the country of origin of its goods.
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y
that the application should be refused in the Registrar’s discretion.
The opponent seeks costs against the applicant.
Counter statement
4.
The applicant filed a counter statement on 30 May 2001. The applicant claims,
inter alia, that it has a tradition in the manufacture and sale of pharmaceutical preparations
worldwide since 1866 and has established a reputation in the pharmaceutical industries. The
applicant also claims that the choice of its mark is honest and that no complaint of confusion
or deception has ever been heard of. The rest of the counter statement consists of denials
and non-admissions. The applicant seeks registration and costs against the opponent.
Opponent’s evidence
5.
The opponent filed evidence in support of the opposition by way of a statutory
declaration by Arthur A Silverstein (“AAS”) under Rule 25.
6.
AAS’s evidence is deposed in his capacity as the Assistant Secretary of the
opponent. AAS deposes that the opponent is an internationally renowned company. For
many years it has manufactured an extensive range of pharmaceutical preparations and related
products. It has established reputation in its business and has acquired significant clientele
worldwide. The opponent has registered the mark “NEURONTIN” for “medicinal and
pharmaceutical preparations” in Class 5 under Trade Mark No. 04881 of 1992 in Hong Kong.
7.
AAS says that the opponent has registered and/or applied for registration of its
trade mark in various classes including Class 5 worldwide.
8.
AAS claims that goods bearing the opponent’s trade mark were first sold in Hong
Kong in January 1995. The volume of sales continued to increase year after year from
US$15,000 in 1995 to US$304,000 in 1999. Sales continued to rise beyond the relevant date
reaching US$545,000 in 2000 and US$686,000 for the period January to August 2001.
9.
AAS says the opponent has invested substantially in advertising and promoting its
goods bearing the opponent’s trade mark since 1996. Expenditure incurred for promotion of
such goods in Hong Kong was US$45,000 in 1996 and US$74,000 in 2001 (January to
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August) with the highest figure recorded in 1997 of US$91,000.
10.
The rest of AAS’s statutory declaration consists of argument rather than evidence.
Applicant’ evidence
11.
Frank M. Schroeter (“FMS”) gives evidence by way of a statutory declaration on
behalf of the applicant in his capacity as General Counsel of the applicant. He states, inter
alia, that the applicant has a tradition in manufacturing and selling pharmaceutical
preparations all over the world since 1866.
12.
FMS says according to the On-line Medical Dictionary, the first five letters
“NEURO” shared by the suit mark and the opponent’s trade mark “[denote] a nerve, of or
pertaining to a nerve, nerve tissue or the nervous system”. It is a common word that
hundreds of medical terms begin with. In the same dictionary, the entry for “NEURON”
states among other things, that “[it receives] input from sensory cells or other neurons and
send output to muscles or other neurons.”
13.
FMS’s evidence shows that on conducting a trade mark search at the Hong Kong
Registry in Class 5 there were six registered marks beginning with the prefix NEURO at the
relevant date.
14.
FMS says that the applicant’s application for registration of the suit mark under
publication no. 1322747 in the People’s Republic of China (“Mainland”) had been opposed by
the opponent. That opposition was defeated on the grounds that the two marks were
different in pronunciation and use, and registration of the suit mark would not confuse
consumers.
15.
FMS states that the applicant’s products bearing the suit mark have been sold in
the Mainland for over one year. Even though the opponent’s products are also registered
pharmaceuticals in the Mainland, there has been no report of any instance or concern over
confusion arising between the products.
16.
FMS says that the opponent’s goods sold under its trade mark, and the goods of the
applicant’s sold under the suit mark are medical products for different ailments. The
opponent’s goods are sold to hospitals, pharmacies, and medical practitioners, for the purpose
of distribution under a doctor’s prescription whilst the applicant’s goods are sold over the
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counter. FMS points out that all sales evidenced by AAS-5 of the opponent’s products have
been to establishments which issue medical prescriptions.
17.
FMS states that the suit mark is “for use in respect of ‘psycho-pharmaceutical
preparations’ [which are] effectively [‘anti-depressant’ drugs] whereas the opponent’s mark is
used in respect of ‘Epilepsy and Neuralgia’ and which symptoms are spasms, seizure and loss
of consciousness more closely related to function of the brain.”
18.
FMS comments that the opponent’s invoices were not issued in the name of the
opponent (being a United States corporation) but Warner-Lambert (HK) Limited and
subsequently Pfizer Hong Kong Limited. The opponent’s product packing makes no
reference to “Warner-Lambert” nor “Pfizer”; instead the company name of “Parke-Davis”
appears on it. There is no record of any registered user for the opponent’s mark in Hong
Kong.
Opponent’s evidence in reply
19.
This consists of a second statutory declaration by AAS. AAS states that the
opponent had filed an appeal on 21 August 2001 against the preliminary decision in the
Mainland stated at paragraph 14 above.
20.
AAS says that the applicant has been using a Chinese mark for its goods in the
Mainland and therefore the majority of the population there would identify the applicant’s
goods by means of its Chinese mark rather than by the suit mark.
21.
AAS deposes that Parke, Davis & Company is a wholly owned subsidiary of the
opponent. Warner-Lambert (Hong Kong) Limited, which changed its name to Pfizer Hong
Kong Limited on 30 March 2001 is the opponent’s local distributor in Hong Kong.
22.
AAS observes that the applicant’s goods have not been registered in Hong Kong
under the Pharmacy and Poisons Ordinance, Cap 138 and have not been sold in Hong Kong.
23.
The opposition came on for hearing on 13 May 2004, at which Mr Gary Kwan of
counsel appeared for the applicant and Mr Ling Chun Wai of counsel appeared for the
opponent.
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Decision
24.
Although the hearing took place after the commencement of the Trade Marks
Ordinance Cap 559, by virtue of sections 1(4) and 10(1) of Schedule 5 to Cap 559, the
application is a pending matter and remains to be dealt with under the provisions of the Trade
Marks Ordinance Cap 43.
25.
At the hearing the opponent abandoned its opposition based on sections 2, 9, 10
and 23, and sought only to rely on sections 12(1), 20(1) and the exercise of the Registrar’s
discretion under section 13(2) of the Ordinance.
Section 20 (1)
26.
It is convenient to first deal with the ground of opposition under section 20(1).
This ground was not specifically named in the notice of opposition. The applicant has not
taken issue with this defect and rightly so, since paragraphs 4 to 7 of the notice of opposition
clearly provide the particulars for this ground. The opponent relies on its earlier registration
for NEURONTIN under Trade Mark No. 04881 of 1992 for medicinal and pharmaceutical
preparations in Class 5.
27.
Section 20(1) provides as follows:
“Except as provided by section 22, no trade mark relating to goods shall be
registered in respect of any goods or description of goods that is identical with or
nearly resembles a trade mark belonging to a different proprietor and already on
the register in respect of –
(a)
(b)
(c)
the same goods;
the same description of goods; or
services or a description of services which are associated with those goods
or goods of that description.”
Two questions arise for determination, firstly, whether the goods of the opponent’s registration,
and the goods in this application are the same or of the same description; and secondly
whether the marks “NEURONTIN” and ‘NEUROSTAN” so nearly resemble each other as to
be likely to deceive or cause confusion should they be used in relation to the respective goods
claimed.
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Same goods or same description of goods
28.
On the first question, the opponent asserts that as a matter of language,
“psycho-pharmaceutical products” and “pharmaceutical preparations” are goods of the same
description, if not the same goods. The applicant contends otherwise.
29.
The applicant says that on the opponent’s own evidence, the opponent’s goods are
only available under a doctor’s prescription. However, I agree with the opponent that there
is nothing in its specification of goods which imposes such a restriction. The application, on
the other hand, is for registration of the suit mark in respect of “psycho-pharmaceutical
products”. The prefix “psycho-” is a combining form “indicating the mind or psychological
or mental processes” (Collins English Dictionary). However that may be, there is no
evidence to suggest that the applicant’s products are statutorily regulated or prescription-only
drugs.
30.
For the purpose of section 20(1), I must postulate a notional use of the respective
marks, that is, a normal and fair use on all goods within the respective specifications, one as
registered, and the other as applied for. I agree with Mr Ling that the opponent’s goods,
being “medical and pharmaceutical preparations” are wide enough to encompass the
applicant’s “psycho-pharmaceutical preparations” as a sub-set. By the same token, even
though the applicant’s goods may be sold over the counter, I must postulate that its
specification could also contain prescription-only drugs or drugs, for that matter, that may be
statutorily classified as poisons under the Poison List Regulations Cap 138B and the
Pharmacy and Poison Regulations Cap 138A. Even if I should be wrong to think that the
respective goods are the same under section 20(1)(a) of the Ordinance, they must be goods of
the same description based on the well-known test of Romer J by reference to three matters in
Jellinek’s Application (1946) 63 RPC 59 at 70:
(a)
(b)
(c)
The nature of the goods in question;
The respective uses of the articles; and
The trade channels through which the commodities are bought and sold.
There is no doubt at all that the goods are pharmaceutical preparations, the use is for the
treatment of medical conditions, and in all likelihood they will be sold, or dispensed in
hospitals or retail pharmacies and chemist shops.
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Near resemblance of marks
31.
Under section 20(1), the suit mark will be barred from registration if it is identical
with or nearly resembles the opponent’s registered mark. I have no discretion. The two
marks are not identical, but nevertheless does the suit mark nearly resemble the opponent’s
trade mark? A “near resemblance of marks” is a resemblance so near, as to be likely to
deceive or cause confusion (section 2(4)). Adapting the time honoured test in Smith Hayden
& Co’s Application (1946) 63 RPC 97 to the facts of this application, I should therefore ask
myself:
“Assuming user by the opponent of its mark NEURONTIN in a normal and fair
manner for any medical and pharmaceutical preparations, is the tribunal satisfied
that there will be no reasonable likelihood of deception and confusion amongst a
substantial number of persons if the Applicant also uses its mark NEUROSTAN
normally and fairly in respect of any psycho-pharmaceutical preparations?”
32.
The basis on which such a comparison is to be made was comprehensively stated
in Pianotist Co’s Application (1906) 23 RPC at 774 at 777. By this test I must compare the
words both by their appearance and by their sound, by considering the kind of customer who
would be likely to purchase the goods, and all the surrounding circumstances. Amongst the
surrounding circumstances to be taken into account is the concept of imperfect recollection
later encapsulated in Sandow Ltd’s Application (1914) 31 RPC 196 at 205 :
“The question is not whether if a person is looking at two trade marks side by side
there would be a possibility of confusion; the question is whether the person who
sees the proposed Trade Mark in the absence of other Trade Mark, and in view only
of his general recollection of what the nature of the other Trade Mark was, would
be liable to be deceived and to think that the Trade Mark before him is the same as
the other, of which he has a general recollection.”
33.
I do not understand Mr Kwan to dispute the opponent’s position, that in the
comparison, account must be taken of the effect of imperfect recollection of the marks both in
speech and in writing, a factor important in a community like Hong Kong where the mother
tongue of most of the population is not English.
34.
Nevertheless, according to Mr Kwan, the respective endings of the marks make a
world of difference. He argues that more emphasis would be put by the purchaser on the
uncommon part of the two marks, essentially the two endings, “TIN” in the case of the suit
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mark and “STAN” in the opponent’s trade mark. That difference, he submits, means not
only is the appearance of the marks different, but the aural effect and idea of the marks as
well.
35.
On the latter, it was suggested that the opponent’s suffix “TIN” gives the
impression that nerves are put on or pinched by metallic objects, an impression, I presume,
engendered by the opponent’s advertisements (see Medical Tribune August 2001 Issue at
AAS-6 and AAS-7). I doubt if that “association” is commonly shared. There is certainly no
evidence to assist me in drawing the conclusions that Mr Kwan himself reached. More
important in my view, is the settled legal position that I am to compare the competing marks
as they would appear in notional fair use under section 20(1). Accordingly I need to isolate
the manner of advertisement of the opponent’s products.
The common element
36.
As a preliminary matter, what is the significance of the common prefix NEURO?
37.
Mr Kwan urges upon me that where there is a common denominator, one must in
looking at the competing formulae pay more regard to the part(s) of the formulae which are
not common, even though it does not follow that one must treat the words as though the
common part was not there at all (Broadhead’s Application (1950) 67 RPC 209 at 215).
38.
In simple terms I believe the test requires me not to analyse the words and exclude
the descriptive element, or to seek something distinctive in the elements added to the NEURO
prefix, but to look at the suit mark and the opponent’s trade mark as a whole and see whether
the two are so similar as to lead to confusion.
39.
To potential purchasers who are conversant with English, the element of
“NEURO” in the two marks is likely, in my view, to allude to the nervous system and
therefore convey a similar idea or impression. There is nothing in the evidence to suggest
that they will be confused as to the source of the goods as a result but that does not preclude
me from finding that the marks are, or are not, confusingly similar.
40.
Nor does the fact that, as at the relevant date, there were at least six other NEURO
marks on the register co-existing in Class 5, namely, NEUROTRAT, NEUROBION,
NEUROVITAN, NEUROGARD, NEUROTOP and NEUROTROPIN (para 8, Statutory
Declaration of Frank M Schroeter). There is no commonality of proprietorship between
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these marks. I do not suggest that by reason of the common prefix these marks nearly
resemble the opponent’s mark; the opponent does not seek to claim exclusive rights in the
prefix NEURO. Apart from Broadhead, Mr Kwan relies on the following paragraph from
Harrods Ltd’s Application (1935) 52 RPC 65 at 70:
“… [It] is a well-recognised principle, that has to be taken into account in
considering the possibility of confusion arising between any two trade marks, that,
where those two marks contain a common element which is also contained in a
number of other marks in use in the same market, such a common occurrence in
the market tends to cause purchasers to pay more attention to the other features of
the respective marks and to distinguish between them by those other features.”
However, the same paragraph in Harrods goes on to read:
“This principle, however, clearly requires that the marks comprising the common
element shall be in fairly extensive use and, as I have mentioned, in use in the
markets in which the marks under consideration are being or will be used.” (my
emphasis)
41.
To put matters in perspective, the co-existence of marks on the register is not
necessarily evidence that any of them are in use. It may also be that the beginning of a word
which is common to the trade will be ignored by the trade if not by the end purchasers. As I
have no evidence on either possibility, I am left with an overall comparison of the two marks
as a whole.
The comparison
42.
NEUROSTAN, the suit mark and NEURONTIN both consist of an invented word
coined by adjoining the prefix “NEURO” with a meaningless suffix “STAN” and “NTIN”.
They carry no obvious meaning to the average consumer. They both consist of plain block
capital letters. They are both trisyllabic and share the same number of letters. The spelling
differs only by two intermediate letters, “S” as opposed to “N” and “A” as opposed to “I”.
In my view it is entirely possible that in recollection the “N” in NEURONTIN could be
dropped or forgotten, and the “A” and “I” confused. I find that the marks are visually very
similar, whether in print, appearing side by side on the shelf or in handwritten orders or
prescriptions.
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43.
Taking the marks as a whole, it may be recognized that the two marks both allude
to the intended use of the products by reason of the shared prefix. There is no evidence as to
how well understood or widespread the dictionary meaning of NEURO is amongst end
purchasers, but it may have a bearing on the perception of the middlemen through whom the
parties products are supplied, such as the nurse or pharmacist in a clinic who dispenses drugs
or the attendant who administers prescriptions in retail pharmacies and chemist shops.
44.
The comparison of these invented words for aural resemblance is more difficult
when there is no relevant evidence on this point. In my view, among customers whose
mother tongue is not English, there could conceivably be myriad ways of pronouncing the two
marks, correctly or incorrectly. Some would put the primary stress on the first syllable
“NEU” in NEUROSTAN and on the second syllable “RON” in NEURONTIN, but it is quite
conceivable that others may place the stress in both cases on the first syllable. I do not think
however, that in normal pronunciation the accent will be put on the last syllable of either word.
The likelihood of aural confusion may be lessened by the fact that the majority of the
population does not speak English as their mother tongue, and so orders are more likely to be
communicated or placed in written form. The brand name of a pharmaceutical product may
be jotted down by imperfect recollection and handed over to the pharmacist or attendant at a
chemist’s store, or the product may be selected from the shelf by recognition. All these
situations suggest that the likelihood of visual confusion is a far more important factor in this
case.
Likelihood of deception or confusion
45.
Although the answer to the question of whether there exists a likelihood of
deception or confusion is one of fact for the tribunal, it is the mind of the ultimate purchasers
of the respective goods which I must consider. The deception and confusion under question
need not ultimately lead the purchaser to purchase the wrong trader’s products; it is sufficient
if he is likely to be caused to wonder whether or not the product has emanated from the
Opponents.
46.
The purchasers to be considered are those who are likely to purchase the product in
question. Although hospital, clinic, pharmacy and chemist shop staff which may be thought
of as the middlemen ministering to the requirements of customers are generally more familiar
with trade marks than are their customers, I nevertheless need to consider who are the ultimate
purchasers. I take this to be the general public who may from time to time have occasion to
require medication in the nature of psycho-pharmaceuticals.
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47.
One cannot doubt that the nature of the products by either party’s specification
would suggest that more care is likely to be exercised by purchasers in the selection process
than they would do for supermarket items.
48.
The applicant’s goods are “psycho-pharmaceutical preparations”. Taking this
literally, they are intended for conditions of the mind or psychological or mental processes.
Clearly the consequences of a mistake would be more serious than preparations, say, for
treating burns and bruises.
49.
Although the evidence shows that the applicant has marketed products under the
suit mark in the Mainland, the applicant had not launched these in Hong Kong at the relevant
date.
50.
As regards the mode of sale, the Applicant’s evidence states that
“… [the respective parties’ goods] are medicinal products for different ailments.
The expectation is that the products sold under the Opponent’s trade mark are sold
to hospitals, pharmacies, and medical practitioners, for the purpose of the products
being distributed under a doctor’s prescription whereas the products to be sold
under the Applicant’s trade mark are sold over the counter. Indeed, I believe the
Opponent’s products are only available in Hong Kong under prescription, and with
reference to exhibit “AAS-5” of the Opponent’s declaration, it is clear that all sales
of the Opponent’s products have been to such establishments.
… the Applicant’s Trade Mark is for use in respect of “psycho-pharmaceutical
preparations” and it is effectively an “anti-depressant” drug. The Opponent’s
trade mark is used in respect of “Epilepsy” and “Neuralgia” and which symptoms
are spasms, seizure and loss of consciousness more closely related to function of
the brain. The uses for the drugs are therefore clearly highly distinguishable, and
there is no question of a mistake being made in identifying the respective parties’
products.
Practitioners in the medical industry are very careful when prescribing drugs to
ensure that they prescribe the correct drug to their patients. The general public
are also extremely cautious when purchasing drugs, whether prescribed or “over
the counter”, and will always ensure they are purchasing the correct drug for their
particular ailment. Medical practitioners will undoubtedly be able to distinguish
the products, and even if the members of the public are given access to the
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respective parties drugs direct, the visual and phonetical differences between the
spellings of the respective parties’ trade marks is clear and obvious, as are the
remedial/curing aspects of the products themselves.” (paras 13 to 15, Statutory
Declaration of Frank M Schroeter).
51.
Evidence of the goods marketed under the opponent’s mark appears to relate to the
treatment of epileptic spasms and neuralgic pain and are prescription-only drugs. However
that may be, I cannot disregard the fact that the opponent’s specification is for a much broader
range of goods for there is no reason why they should be barred from dealing in the full range
of goods claimed. Prima facie their prior registration allows them to do so, for section 20(1)
looks to the state of the Register rather than to the use, a factor relevant to section 12(1).
Since the opponent’s specification covers “medicinal and pharmaceutical preparations”, I
must therefore postulate all the members of the public who at any time may visit a pharmacy
or chemist’s shop, and this includes customers purchasing such products both over the counter
without producing a doctor’s written prescription, as well as purchasers who are required to
produce such a prescription. I find support for this approach in Bayer Products Ltd’s
Application (“Diasil”) (1947) 64 RPC 125 at 134 (approved on appeal to the Court of
Appeal):
“Still considering the matter under [section 20], I have, as regards the Appellants,
to postulate a wide range of customers, because I have to postulate the use of the
mark “Alasil” in relation to all goods falling within Class 5, and I have to postulate
customers purchasing over the counter goods within the class not requiring, as a
condition of their being supplied, the production of a doctor’s written prescription,
as well as purchasers who require such a prescription.
……
Then I have to consider what is likely to happen if each of the marks is used in a
normal way as a trade mark for the goods of the respective owners of the marks.
As I see it, I must postulate the stocking in chemists’ shops of preparations under
each mark. I must postulate a demand for the various preparations, whether by
customers over the counter without, or, where necessary, with a doctor’s written
prescription, or by doctors or hospitals. I must make due allowance for what is
commonly called the human element – humanum est errare; but I must also
postulate reasonable conduct and, where necessary, the exercise of reasonable case
by all concerned…”
52.
In Bayer, the applicant’s mark “Diasil” was proposed to be used in respect of
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sulphadiazine, a poison. Mr Kwan was at pains to show here, that the composition of the
opponent’s products marketed under NEURONTIN includes gabapentin, classified as a
poison under the Poisons List Regulations Cap 138B. Its channels of supply are subject to
statutory regulation. It is Mr Kwan’s submission that the Registrar should in considering the
possibilities of deception take into account the extent to which such a possibility is minimised,
or obliterated by the statutory regulations.
53.
Bayer is of course very strong authority. I would be misguided however, to reach
the same conclusion in this instance; the underlying facts are entirely opposite.
54.
There are special circumstances in Bayer not present in this application. The
applicant’s goods in Bayer consist only of the narrow specification of “sulphadiazine
preparations”, available at the relevant time only on prescription. On the facts the applicant
was found to have shown that the statutory regulation of the channels of supply of its products
made it illegal to depart from certain channels and methods of distribution and use. That
was sufficient to differentiate the channel of supply entirely from cases where one is dealing
with products which anybody can order or buy and anybody can supply over the counter.
The Court found as a result that the applicant had discharged its onus of proving that there
was no reasonable likelihood of confusion if “Diasil” was used normally and fairly for
sulphadiazine preparations, against normal and fair use by the owner of “Alasil” of its mark
for the goods of interest.
55.
The contest here however, is between the opponent’s “medical pharmaceutical
preparations” and the applicant’s “psycho-pharmaceutical preparations”. The former must in
my view be broad enough to cover not merely pharmaceutical preparations containing
gabapentin as an ingredient, but any type of medical pharmaceutical preparations, whether
psycho-pharmaceutical or non-psycho-pharmaceutical in nature, poison or non-poison in
composition, prescription or non-prescription in mode of supply.
56.
Section 20(1) is not concerned with the limits of the actual user of the two marks;
it is concerned with the ambit and scope of the registrations. That being the case, the
question I have to decide is whether there will be an increased probability of deception if the
opponent uses their mark to the full extent to which they are entitled to use it under the
registration.
57.
I agree with Mr Ling that a more stringent test than the one postulated in Smith
Hayden should be applied in the case of Class 5 pharmaceutical products. In Terumo KK v
Beecham Group plc (HICALIQ) [1993] AIPR 496 and [1994] AIPR 306, a more stringent test
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was postulated by the Hearing Officer for the following reason :
“Mr Garland, [for the Opponent] citing Algelox TM (1953) 70 RPC 205, submitted
that, in the case of pharmaceutical products, in the absence of restrictions upon
their distribution, it is the more important that the public should be protected from
the consequences of deception and confusion (at 507 D-E). … Mr Garland’s
submission based on the Algelox TM case are entirely appropriate. Where the
risk is small but the goods are such that confusion could have exceptionally serious
consequences … the accepted tests generally applied to consideration of cases
under ss 12(1) and 20 of the Ordinance require modification. The reference to
‘substantial’ is inappropriate. The references to ‘real tangible’ and ‘reasonable’
should be replaced by ‘small’ … A small risk, however, is not an isolated risk,
which regrettably can never be entirely ruled out. There must be a risk that more
than a handful of people of normal intelligence and exercising reasonable care may
be confused.” (at 509 B-E).
58.
The relevant part of Algelox TM or Harker Stagg Ltd’s Trade Mark (1953) 70 RPC
205 referred to in Terumo was where Lloyd Jacob J observed, at 210:
“… I think it is desirable that perhaps I should say this. Had the matter been one
for my initial consideration, I should, I hope, have appreciated that, having regard
to the absence of any restriction upon the means of distributing these goods, and
the fact that all sorts and conditions of people may be either visited with
complaints which require their consumption or may be sent to procure supplies of
these goods, the matter properly falls to be considered by an examination of the
two marks, and, if there were, or is, any reasonable ground for supposing that by
reason of their similarity confusion or deception is likely to arise, the fact that they
are used in relation to a pharmaceutical preparation is, perhaps, all the more reason
for seeing that the public are protected from the consequences of deception and
confusion.”
59.
On appeal, the Hearing Officer’s approach in Terumo was approved by Rogers J
(as he then was) with the caveat that a stringent approach may not be necessary in every case
concerning pharmaceutical goods. In my view the substitution for the stringent approach is
justified here given that mistake in identity of a pharmaceutical product for treating the
nervous system could lead to disastrous consequences.
60.
I find that the applicant has not discharged its onus of showing, assuming notional
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use by the opponent of NEURONTIN upon medicinal and pharmaceutical preparations, that
registration of the suit mark and its user would not give rise to a tangible likelihood of
confusion and deception.
61.
Section 20(1) is of course subject to section 22 of the Ordinance. However, since
the applicant has not commenced use in Hong Kong at the relevant date, no issue of
concurrent user arises. In the result, the opposition succeeds under section 20(1), and I need
not consider the other grounds of opposition relied upon.
Costs
62.
The opponent has sought costs. There is nothing in the circumstances or conduct
of this case which would warrant a departure from the general rule that costs should follow
the event. I accordingly order that the applicant pays the costs of and incidental to these
proceedings.
63.
Subject to any representations as to the amount of costs or calling for special
treatment, which either party makes within one month from the date of this decision, costs
will be calculated with reference to the usual scale in Part I of the First Schedule to Order 62
of the Rules of the High Court (Cap 4) as applied to trade mark matters, with one counsel
certified, unless otherwise agreed between the parties.
( Lavinia Chang )
p. Registrar of Trade Marks
29 June 2004
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