In this case, Biologische Heilmittel Heel GmbH ("Biologische") succeeded in preventing the registration of the TRAUMAGEL trade mark in New Zealand by Cresilon, Inc. ("Cresilon") based on use and two earlier registrations for the TRAUMEEL trade mark.
Cresilon applied to register the TRAUMAGEL trade mark for "medical preparations to treat wounds and to stop bleeding; hemostat, namely, bio-material preparations in the nature of tissue adhesives, tissue sealants, hydrogels, films; barriers, adhesion prevention materials, spray adhesive materials for control of profuse bleeding for medical use" in Class 5.
Biologische opposed the application for the TRAUMAGEL on the basis that:
- the opposed TRAUMAGEL trade mark would be likely to deceive or cause confusion (Section 17(1)(a)); and
- the TRAUMAGEL trade mark is similar to Biologische's registrations for TRAUMEEL and its use is likely to deceive or cause confusion (Section 25(1)(b))
The Commissioner determined that both grounds were established.
In relation to the section 17(1)(a) ground, Biologische filed sufficient evidence of use of the TRAUMEEL trade mark to establish the necessary level of awareness of the TRAUMEEL trade mark in New Zealand. As a result, this shifted the onus to Cresilon to establish that the use of the TRAUMAGEL trade mark would not be likely to deceive or cause confusion. In this regard, the Commissioner noted that Biologische needed only to show that there was awareness of the TRAUMEEL trade mark, as opposed to reputation, and steady sales of the TRAUMEEL goods in New Zealand over a number of years sufficed in this regard.
Turning to the second limb of section 17(1)(a), the Commissioner considered the following factors in determining that, in light of the awareness of the TRAUMEEL trade mark in New Zealand, that fair notional use of the TRAUMAGEL trade mark is likely to deceive or cause confusion:
- the overall similarity of the TRAUMAGEL and TRAUMEEL trade marks, noting the shared prefix TRAUM-; and
- that there is no reason to assume that the respective goods would not be available to the general public, notwithstanding that the TRAUMAGEL goods may be considered as more "medicalised" and as the respective goods are both used in wound care.
The section 25(1)(b) ground of opposition was found based on similar reasoning though the Commissioner noted that the relevant comparison of the respective marks was between their notional use. In contrast, the relevant comparison under section 17(1)(a) was between the notional use of the opposed TRAUMAGEL trade mark and the actual use of the TRAUMEEL trade mark.
This case is a reminder that marks sharing the same prefix can be held to be deceptively similar and establishing awareness of the prior mark in New Zealand can be key to success.
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