No likelihood of confusion between ENO and ENOVA

In Beecham Group Plc v ADM Kao LLC ([2009] ATMO 61, August 10 2009), Beecham Group Plc has unsuccessfully opposed applications by ADM Kao LLC for the registration of three trademarks comprising the word 'enova'.

Another member of the Beecham/Glaxo Group, Glaxo Group Limited, is the current owner in Australia of several trademarks consisting of or including the word 'eno' for medicinal preparations in Class 5 of the Nice Classification. The first registration dates from 1909. On the evidence, use of the ENO mark in Australia goes back at least 150 years. The mark has even been described as "iconic". Another member of the Beecham/Glaxo Group, SmithKline Beecham Pharma GmbH & Co KG, had a registration (dating from 1996) for the trademark EUNOVA for vitamin preparations, dietetics and infant and invalid foods in Class 5. ADM Kao applied for the registration of three ENOVA marks in respect of, among other things, dietary preparations and nutritional supplements.

The matter had a rather curious history. No citations were raised by the examiner in the course of examination. The three applications were advertised as accepted and were opposed by Beecham during the course of 2003. The time for filing Beecham's evidence (three months) was extended on several occasions, apparently on the basis that the parties were in settlement negotiations. Beecham's evidence, comprising a single statutory declaration by an officer of another member of the Beecham/Glaxo Group, was filed in October 2007.

ADM Kao did not file any evidence-in-answer and the matter was set down for hearing in May 2009. Neither party appeared at the hearing. Beecham filed written submissions, but ADM Kao did not. The registrar's delegate thus gave her decision on the written record.

The main ground of opposition was based on Section 44 of the Trademarks Act 1995 and the prior registrations for ENO and EUNOVA. No evidence was filed relating to the EUNOVA mark; the first reference to it was in Beecham's submissions filed at the hearing.

The delegate held that:

• the significant aural and visual differences between ENO and ENOVA would militate against the possibility of deception; and
• the marks were not deceptively similar.

The delegate did not appear to have considered whether the ENOVA mark might be seen as a combination of 'eno' and 'nova'.

With regard to the citation of the EUNOVA mark in Beecham's written submissions, the delegate stated that had she concluded that the EUNOVA mark presented a valid barrier to registration, she would, in procedural fairness, adjourn the hearing to give ADM Kao an opportunity to respond. However, in her opinion, and in the absence of evidence, she considered that "the critical placement of the single letter 'U' promotes a fundamental difference" between the marks. In her view, "the total impression, when the trademarks are compared side-by-side, is one not of resemblance, but of dissimilarity". However, many trademark practitioners might not agree with that assessment - nor with the proposition that, for the purpose of determining deceptive similarity, a side-by-side comparison is the appropriate test.

The delegate also considered, and rejected, other grounds raised in the submissions under Section 42(b) (use contrary to law), Section 59 (lack of intention to use) and Section 60 (prior reputation) of the act.

The delegate was clearly strongly influenced by the lack of evidence of likelihood of confusion and the raising of the citation of the EUNOVA mark at the last minute. She stressed that in opposition proceedings, the onus is on the opponent to show by evidence that the mark should not proceed to registration. The case illustrates once again the necessity for the opponent to present well prepared and relevant evidence.

Des Ryan, Davies Collison Cave, Melbourne