SCHULKE & MAYR GMBH v Ecolab USA Inc [2016] ATMO 8 (1 February 2016)

Ecolab USA Inc. (“the Applicant”) applied for registration of the trade mark MICROGUARD (“the opposed mark”) in relation to various skin care products. Upon examination, the mark was accepted for registration on 24 October 2013.

The application was opposed by Johnson & Johnson on 23 December 2013. Schulke & Mayr GmbH (“the Opponent”) took over the opposition after gaining the rights to Johnson & Johnson’s MICROSHIELD trade marks and businesses.

In Australia the MICROSHIELD trade mark is the subject of three registrations for classes 3 and 5 covering antiseptic skin cleansers and cleaning preparations for hands and body, with all three registrations having earlier priority dates than the opposed mark. The opponent did not assert any issues with substantial identity, and so the hearing officer only focused on the issue of deceptive similarity.

These antiseptics are quite particular goods. The hearing officer noted that the “goods are sold by sales representatives to hospitals and other healthcare facilities, including day surgeries, GP clinics, dental practices, aged care facilities, and veterinary practices. The evidence also shows sales to the non-hospital market by distributors and online.”

The Opponent and Applicant’s respective trade marks contain similarities as a consequence of the prefix MICRO. The Opponent’s attorney suggested that it could be an allusion to “microbial”, referring to the anti-bacterial characteristics of their goods, but the Opponent specifically rejected any descriptive aspects of the prefix. Other hearing officers might have referred to the respective marks as “weak trade mark material” by reason of their descriptive nature.

The Opponent argued that the MICRO prefix was a significant and distinctive part of the trade marks, while the words SHIELD and GUARD are synonymous, which could give the ordinary consumer the impression that both products are from the Opponent.

The Applicant countered by submitting that the prefix MICRO is a common English prefix that other traders may need to use, and should not be granted to a single trader for use thereby exerting a monopoly over an entire market. Therefore, the prefix should be disregarded and focus should be solely on the differences in the respective suffixes, making the competing marks distinguishable to each other.

The hearing officer was of the view that the average consumer for the goods bearing the competing trade marks will be reasonably well-informed and observant as the goods pertain to antibacterial hand soaps, skin cleansers, hand rinsers and other products designed to prevent spread of infectious diseases. (This is called “pharmacovigilance”, the attuned state of individuals involved in the medical industry towards the brands of medical products.)

Additionally, the hearing officer noted that the MICRO prefix does not indicate the size of the subject matter described by the suffix element of the mark, but is rather referring to germs and the like, the things the suffix is “shielding” or “guarding” against. The antibacterial/antimicrobial characteristic of the goods suggest a descriptive element to the prefix, giving the visual and aural assessment of the marks heavier weight when comparing the marks.

But even with the benefit of pharmacovigilant consumers, and a niche product line, the hearing officer’s finding is controversial: the hearing officer considered MICROGUARD and MICROSHIELD to be visually and aurally distinct, and that the conceptual similarities will be irrelevant in the mind of sophisticated consumers. This ground for opposition was unsuccessful. In our view, this is an unhappy precedent.

Otherwise, despite substantial evidence consisting of extensive sales, advertising expenditures, and even surveys attesting to the reputation of the MICROSHIELD brand, the hearing officer noted that the vast majority of the submitted evidence contain not just the MICROSHIELD brand, but also the Johnson & Johnson Medical trade mark, as well as a subordinate identification as “ANGEL.” This made it difficult to attribute any reputation claimed solely to the MICROSHIELD mark, as the reputation could also be attributed to MICROSHIELD ANGEL or the popular JOHNSON & JOHNSON brand.

Additionally, the evidence also showed that many of the Opponent’s products are sold by sales representatives and distributors, which makes it easier for purchasers to recognise the origin of the goods: a dedicated sales representative or distributor is unlikely to be seen by a doctor or hospital procurement officer as a representative of a company that is not the Opponent.

The hearing officer formed the view that the MICROSHIELD trade mark is seen to have already built a substantial reputation and is in no danger of being confused with the Opposed mark. The court was not satisfied that the Opponent has established any of its grounds for opposition, and the application will proceed to registration unless the decision is appealed.