DECEPTIVE SIMILARITY
154 Both ss 44 and 60 speak of marks being 'deceptively similar' so ss 44 and 60 will not be made out by showing only that the marks are similar. As previously noted, s 10 of the Act provides that two marks are deceptively similar if they so nearly resemble each other that it is likely to deceive or cause confusion.
155 The ultimate question for determination is whether the use of the LIVALO mark in relation to pharmaceutical preparations, or as the application was later limited to prescription only pharmaceutical preparations for the treatment of hyperlipidemia and related conditions or as was contended for (in the event that I was otherwise against the respondent) for prescription pharmaceutical preparations for the treatment of hyperlipidemia, would be likely to cause deception and confusion with the LIVIAL mark's use for pharmaceutical products.
156 The test is different from that which applies when considering whether the marks are substantially identical.
157 In Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658, Dixon and McTiernan JJ said when considering the question of deceptive similarity:
'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 bias will express their desire to have the goods, then similarities both of sound 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 higher perception of 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 forthcoming, is of great weight.'
158 In the end result it is a question of fact whether there is a reasonable probability that the mark which is sought to be registered so nearly resembles the registered mark that it is likely to deceive or cause confusion.
159 In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd at 415, Windeyer J said:
'On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.'
160 In considering the likelihood of deception or confusion, the Court must consider whether there is a real and substantial risk that the result of the use of the mark will be that a reasonable person (or a number of persons in the relevant class of likely purchasers) will be caused to wonder whether it might not be the case that the two products come from the same source. In making this assessment, all of the surrounding circumstances need to be taken into account, including the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold, and the character of the probable purchasers of the goods and services: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 382-383; Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 at 218; McCormick v McCormick (2001) 51 IPR 102 at 107.
161 The applicant claimed that although the respondent's mark LIVIAL is registered in respect of 'pharmaceutical products for human use', the sole use by the respondent of the LIVIAL mark is as a trade name for the chemical compound tibolone. In this respect it relied on evidence given by the respondent's witness, Dr Oddens, which was to the effect that the use of the name LIVIAL in Australia has been limited to the tibolone product. I accept that evidence.
162 Tibolone is a pharmaceutical product, the sale of which is regulated by the Therapeutic Goods Act 1989 (Cth). Because of the provisions in s 25 of that Act, the respondent is only entitled to sell tibolone for particular uses. Those uses are described as 'indications' and include:
· treatment of symptoms resulting from the natural or surgical menopause;
· prevention of post-menopausal bone mineral density loss.'
163 LIVIAL is only available on presentation of a doctor's prescription. It is almost exclusively prescribed by medical specialists practising in the treatment of menopause and osteoporosis and, in particular, those specialising in gynaecology.
164 The prescription of pharmaceutical substances is regulated by each of the States and Territories. In Victoria the relevant legislation is the Drugs, Poisons and Controlled Substances Act 1981 (Vic)and the regulations made thereunder. Relevantly, the only person who can prescribe pharmaceutical prescriptions, at least for LIVIAL, would be a medical practitioner. That legislation also regulates pharmacists. If a drug is a prescription drug a pharmacist can only dispense that drug on a doctor's prescription.
165 I find that LIVIAL will only be prescribed by medical practitioners who will usually be specialist gynaecologists. It will only be prescribed to women. LIVIAL would only likely to be prescribed for older women. It will only be provided to older women by pharmacists in response to a prescription.
166 I have found that the applicant intends to use the LIVALO trade mark for the treatment of hyperlipidemia. Dr Stone said that drugs for the treatment of hyperlipidemia of this kind are generally not sold over the counter but are available only on prescription. I accept that evidence. I find that the pharmaceutical preparation sought to be sold under the mark LIVALO would only be available on prescription, probably in the case of this pharmaceutical written by a general practitioner.
167 The respondent contended that:
'Where prescription supply is involved, general practitioners, specialists, chemists and ultimate consumers are the relevant classes of persons to consider when one is assessing confusion. On the other hand when non prescription supply is involved the relevant classes are chemists and supermarkets and other retailers of pharmaceutical products and consumers.'
168 The respondent claimed that people in each relevant class would be 'caused to wonder' whether there was some connection between products bearing the LIVIAL and LIVALO marks. It suggested that the applicant's inquiry into the likely confusion of doctors (with assumed knowledge of the drugs), after careful assessment of the marks, did not address the issue as to whether they may or may not initially wonder where the LIVALO product comes from. The respondent further contended that the question of confusion is one for the Court and not for any witness. In relation to the likelihood of deception or confusion, the respondent submitted:
'If two drugs have a similar prefix if a doctor knows of one drug and sees a new drug with a similar prefix it is possible that he might think that there was a connection between them or that they were from the same "family" of drugs. This potential problem must apply a fortiori in the case of drugs having the same prefix and similar suffixes.
On the whole doctors either handwrite prescriptions or they prepare them on a computer themselves. As Dr Baro frankly acknowledged in cross-examination doctors in the past have been notorious for producing poorly handwritten scripts and errors in communication between doctors and chemists have always occurred. He also (frankly) volunteered that it was "common" and "unfortunate" in medicine and hospitals for a wrong product to be administered and therefore "every step has to be taken to reduce that possibility".
There are a number of possible instances where confusion might arise with prescription pharmaceuticals whose names are similar. First, errors may occur in the transcription process when a doctor is typing or handwriting a prescription. A graphic illustration occurred in these very proceedings when Dr Baro's affidavit was transcribed. The word LIVIAL was spelt "LIVAL". Dr Baro did not notice the error when he swore his affidavit and corrected it from the witness box. If the same error were to occur on a handwritten or typed prescription, or, for example, a doctor's "scrawl" were to be illegible, a chemist receiving it could well draw the conclusion that LIVALO was intended and not LIVIAL and wrongly supply the LIVALO product. Dr Baro acknowledged this. Secondly, errors may occur at the pharmacist level (either in pharmacies or hospital dispensaries). The chemist may be presented with a poorly handwritten script or a typed script which contains an error. Alternatively the chemist may take the wrong product from his storage area even though the script is legible and accurate. Alternatively a doctor may phone chemist and ask them to supply LIVIAL urgently and send a prescription to that chemist the following day. The aural and written confusion may arise in that situation. Thirdly, a patient may have been prescribed both LIVIAL and LIVALO (an occurrence which Dr Baro described as likely to occur…) and mistakenly take one intending it to be the other. Alternatively there may be two patients living together one taking LIVIAL and the other LIVALO and one may mistakenly take the wrong pharmaceutical.
A large number of pharmaceuticals are available to patients in Australia "off the shelf" (from pharmacies and non-pharmacies) and on prescription…If both or either LIVIAL and LIVALO were (notionally) to become available "over the counter" then the possibility of both aural and written confusion must be considered. A chemist may not hear a customer properly or a customer may have incorrectly identified the product and may ask for the wrong one. The possibility of confusion is heightened to an even greater degree when "off the shelf" pharmaceuticals sold in supermarkets, alternative health shops etc are considered. The customer may reach out in the haste of the shopping process and mistakenly take the LIVALO product (or vice versa)…'
169 The respondent emphasised the need to apply the doctrine of 'imperfect recollection' when determining the likelihood of confusion. It referred to dicta of Luxmoore LJ in Rysta Ltd's Application (1943) 60 RPC 87 at 108 who said that:
'The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering the person's wants.'
170 The respondent contended that in the context of the present case, where the two marks are meaningless words, the risk of 'imperfect collection' must increase.
171 The decision to prescribe pharmaceuticals is invariably that of the treating medical practitioner. It is the medical practitioner who determines how his or her patients will be treated and whether they will be treated with a particular pharmaceutical. The patient does not make any real contribution to the decision about which pharmaceutical is to be prescribed.
172 In those circumstances, in considering whether there is likely to be any deception or confusion at the point of obtaining the pharmaceutical, regard must be had to the risk of the doctor misprescribing one pharmaceutical for the other.
173 There is an attendant risk, of course, as the respondent addressed, that the pharmacist could mistakenly dispense one product for the other. It must be remembered, however, that the pharmacist is the recipient of the prescription. He or she plays no part in the prescribing of the pharmaceutical. The pharmacist's obligation is to dispense the pharmaceutical.
174 For reasons which I have already given, in my opinion, it is likely that LIVIAL will only be prescribed for conditions for which it is presently permitted to be sold (i.e. the treatment of symptoms resulting from natural or surgical menopause and prevention of post-menopausal bone mineral density loss).
175 Dr Stone and Dr Baro both gave evidence that they would be unlikely to confuse the names of the two drugs when prescribing medication. Dr Stone said that he takes extreme care in prescribing drugs. He deposed that he understands that small differences in a product name are likely to refer to a different pharmaceutical. Dr Stone offered examples of pharmaceutical products bearing similar names that are available for prescription in Australia, including: ZINNAT and ZINVIT; AVANZA and AVANDIA; ANAPROX, AROPAX and APRINOX. He stated that although those names are similar, he immediately recognises the differences between them and the respective pharmaceuticals to which they apply. He said that he recognises that the name LIVIAL is different from the name LIVALO and that the common LIV prefix does not lead him to assume that the pharmaceuticals sold under those names are related in any way.
176 Dr Stone's evidence was that he would be unlikely to confuse the names LIVALO and LIVIAL even if the names were used on the same type of pharmaceutical product and would be less likely to confuse the names if they were used on different or unrelated types of pharmaceutical products. Dr Stone was not cross-examined on this evidence.
177 Dr Baro's also said that he would not be likely to confuse the names LIVALO and LIVIAL. In his affidavit, he deposed that:
'[s]mall differences in pharmaceutical names can identify completely different pharmaceuticals and accordingly it is necessary to take great care in reading the names of pharmaceuticals and when prescribing them to patients.'
178 Dr Baro also offered examples of a number of pharmaceuticals having a common sequence of letters, including: PROPECIA, PROSCAR and PROZAC. His evidence was that PROPECIA and PROSCAR are essentially the same pharmaceutical sold by the one company but under a different name. He said that PROZAC is a completely different pharmaceutical to PROPECIA and PROSCAR and is sold by a different company.
179 Dr Baro indicated that despite the common 'LIV' prefix, he recognises that LIVIAL and LIVALO are different names. He said that he believed these names would be written differently and when spoken each would sound different such that he would be no more likely to confuse those names than he would be to confuse many other names presently used for pharmaceuticals.
180 Dr Baro further said that given that small differences in the names of pharmaceuticals may indicate a completely different pharmaceutical, he takes a careful note of the complete name when prescribing a pharmaceutical. His evidence was that the common 'LIV' prefix in LIVIAL and LIVALO would not lead him to assume that the names were associated. He stated that the names were sufficiently different such that he would be unlikely to confuse the two. In the penultimate sentence of his affidavit, Dr Baro deposed:
'Where the pharmaceuticals corresponding to each of the respective names LIVALO and LIVAL [sic] have different uses or correspond to different pharmaceuticals then this difference would make it even more apparent to me that different pharmaceuticals are meant by each of the different names.'
181 In cross-examination, Dr Baro admitted that although such an error was unlikely to occur, if an error on a prescription of the kind that was made in the penultimate sentence of his affidavit was made, a pharmacist could provide a patient with LIVALO when they were meant to have LIVIAL.
182 Dr Baro said that when a new drug is introduced to the market that has the same prefix as an existing drug, it may be possible for a doctor to think that there is a connection between one and the other. He said that in his opinion, however, a medical practitioner would take steps to investigate the drug before prescribing it to a patient.
183 Dr Baro's evidence was that, on the whole, doctors either handwrite prescriptions or they prepare them on a computer. In cross-examination, Dr Baro acknowledged that doctors historically have been notorious for producing poorly handwritten scripts. Errors in communication between doctors and pharmacists have occurred. Dr Baro also admitted that it was 'common' and 'unfortunate' in medicine and hospitals for a wrong product to be administered and therefore 'every step has to be taken to reduce that possibility'.
184 The respondent cross-examined Dr Baro on an error in his affidavit as an example of how confusion might arise with prescription pharmaceuticals where their names are similar. In the second to last sentence of Dr Baro's affidavit, the word LIVIAL was spelt 'LIVAL'. Dr Baro did not notice the error when he swore his affidavit and corrected it from the witness box. Dr Baro acknowledged that if the same error were to occur on a handwritten or typed prescription, or if a doctor's writing were to be illegible, a pharmacist receiving it could well draw the conclusion that LIVALO was intended and not LIVIAL and wrongly supply the LIVALO product.
185 I do not think too much can be made of the error which appeared in Dr Baro's affidavit and his failure to observe it before he saw that affidavit. Whilst he admitted that a pharmacist could draw the conclusion that the medical practitioner had intended to prescribe LIVALO rather than LIVIAL that does not necessarily follow. It might be thought that the pharmacist would check with the prescribing medical practitioner before dispensing the pharmaceutical.
186 I accept Dr Stone's and Dr Baro's evidence. Their evidence in cross-examination was to the effect that there are a number of drugs presently on sale in Australia which have similar names. They would not assume that because those drugs or pharmaceutical preparations had similar names that they were manufactured or distributed by the one company. Because of the similarity of names in the pharmaceutical industry, medical practitioners need to take care in prescribing those drugs. I accept their evidence that medical practitioners take especial care in prescribing drugs because they are commonly faced with similar sounding or appearing names. That evidence was also not challenged. Indeed, that evidence was supported in a number of respects by the evidence given by Dr Oddens, Mr Moore and Mr Katalinic.
187 I find, therefore, that it is not uncommon in the pharmaceutical industry in Australia for drugs to bear similar sounding and looking names. It is not usual for those dealing with those drugs to assume that because drugs have similar sounding names they are either manufactured or distributed by the one company. Because drugs do have similar sounding names, special care must be taken by those who have the responsibility for prescribing and, indeed, dispensing drugs to ensure that the right drug is addressed.
188 Mr Cruise identified 16 trade marks presently registered in Australia for a single word which commended with the letters 'LIV'. Not all of those, of course, are registered in Class 5.
189 In my opinion, on the evidence which has been adduced by the applicant in its case and in its cross-examination, prescription drugs are not likely to be confused with each other even when they are sold under a mark which is similar sounding or looking to a mark of another drug. Medical practitioners are unlikely to confuse the drugs. There is no evidence that pharmacists are likely to confuse them. I find that pharmacists are also unlikely to confuse them.
190 In my opinion, it is unlikely that a medical practitioner would confuse LIVIAL with LIVALO. LIVIAL will only be prescribed for older women who are menopausal or who have indications of osteoporosis. LIVALO will be prescribed for anyone who suffers from high bad cholesterol. The conditions are so dissimilar, in my opinion, that the risk of confusion which is very slight is even less.
191 Dr Katalinic said that in prescribing tibolone special care needs to be taken with patients who have high cholesterol levels and kidney disease. In particular, he said that in prescribing tibolone special care needs to be taken with patients who are being treated with an anti-coagulant such as warfarin as tibolone also acts as an anti-coagulant. It was said that if a patient were to receive tibolone at the same time as they were treated with warafin then it is possible that they could die from blood loss. Dr Baro said that if a person were mistakenly to receive LIVIAL instead of LIVALO from a nurse in a hospital dispensary or a pharmacist the consequences could be life threatening. Both Dr Baro and Dr Katalinic said that LIVALO and LIVIAL could be prescribed to the same patient. Of course, having regard to the purose for which LIVIAL is prescribed, the patient would have to be a woman. Dr Baro said that in a hypothetical situation where a patient had LIVIAL for the treatment of menopausal, syndrome the patient could also be prescribed LIVALO for the treatment of high cholesterol.
192 The chances of a nurse administering LIVIAL instead of LIVALO are, in my opinion, remote. It cannot be said it could not happen but I think it highly unlikely. The chances are, in my opinion, no higher than a nurse administering any wrong pharmaceutical or instigating any wrong treatment. I think the chances of a pharmacist dispensing the wrong pharmaceutical are also remote. The persons who prescribe, dispense and administer pharmaceuticals are taught the dangers of a patient receiving the wrong medicine. They are trained to keep the patient's health and safety in mind. They are aware of the consequences.
193 It was also argued that there was a risk that patients who had been prescribed both LIVIAL and LIVALO might confuse the two drugs and take one instead of the other. As I have already said, it would only be mature menopausal women who would be prescribed LIVIAL. It is possible, of course, that they could also be prescribed LIVALO if it were allowed to be marketed under that mark for treatment of concurrent hyperlipidemia.
194 It cannot be said that women in that group might not inadvertently take one drug instead of the other. However, I think the possibility of that occurring is again remote but, in any event, the consequences of such an advertence are not of the kind to which Dr Katalinic adverted in his evidence. If a woman has been prescribed both LIVIAL and LIVALO the medical practitioner would have considered the risks associated with taking LIVIAL and internal haemorrhaging. The woman would not have been prescribed LIVIAL in the first place. So, if she were to take LIVIAL inadvertently rather than LIVALO, no adverse consequences would be likely to follow.
195 I think, however, that the applicant's alternative submission, as modified by the respondent, to limit the registration to prescription pharmaceutical preparations for the treatment of hyperlipidemia further lessens the risk of any deception or confusion.
196 In my opinion, the LIVALO mark is not deceptively similar because it is not likely to deceive or cause confusion.
197 For those reasons, the respondent's opposition to the registration relying on s 44 must be dismissed. Of course, insofar as the respondent relied upon s 60 to oppose registration, that also must be dismissed because the first limb of s 60 requires proof of the mark being substantially identical with or deceptively similar to the respondent's mark. For the reasons I have already given, the respondent has failed to establish that the marks are either substantially identical or deceptively similar.