Australia: Biologische Blocks Cresilon’s Application to Register Traumagel Trademark in New Zealand
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Cresilon, Inc v Biologische Heilmittel Heel GmbH
 NZIPOTM 13 (June 23, 2021)
In this case, Biologische Heilmittel Heel GmbH (“Organic“) succeeded in preventing the registration of the trade mark TRAUMAGEL in New Zealand by Cresilon, Inc. (“Cresilon“) on the basis of use and two prior registrations of the TRAUMEEL trademark.
Cresilon applied for registration of the trade mark TRAUMAGEL for “medical preparations intended to treat wounds and to stop bleeding; hemostats, namely, preparations of biomaterials in the form of tissue adhesives, tissue sealants, hydrogels, films; barriers, adhesion prevention materials, adhesive spray materials for the control of heavy bleeding for medical purposes” of class 5.
Biologische opposed TRAUMAGEL’s application on the grounds that:
- the opposing mark TRAUMAGEL would be likely to mislead or lead to confusion (Article 17(1)(a)); and
- the TRAUMAGEL mark is similar to the Biologische registrations for TRAUMEEL and its use is likely to mislead or cause confusion (Article 25(1)(b))
The Commissioner determined that both grounds were established.
With respect to the Article 17(1)(a) ground, Biologische has filed sufficient evidence of use of the TRAUMEEL mark to establish the necessary level of recognition of the TRAUMEEL mark in New Zealand. Therefore, it was up to Cresilon to establish that the use of the TRAUMAGEL mark would not be likely to mislead or lead to confusion. In this regard, the Commissioner noted that Biologische only had to demonstrate that there was knowledge of the TRAUMEEL brand, as opposed to reputation, and that regular sales of TRAUMEEL products in New Zealand over a certain number of years was sufficient for this.
With respect to the second part of section 17(1)(a), the Commissioner considered the following factors to determine that, given the reputation of the TRAUMEEL mark in New Zealand, the fictitious fair use of the TRAUMAGEL brand is likely to mislead or sow confusion:
- the overall similarity of the trade marks TRAUMAGEL and TRAUMEEL, noting the common prefix TRAUM-; and
- that there is no reason to assume that the respective products would not be available to the general public, notwithstanding that the TRAUMAGEL products may be considered more “medicalised” and that the respective products are both used in the wound care.
The s. 25(1)(b) ground of opposition was found to be based on similar reasoning, although the Commissioner noted that the relevant comparison of the respective marks was in their fictional use. On the other hand, the relevant comparison under Article 17(1)(a) was between the fictitious use of the opposing trade mark TRAUMAGEL and the actual use of the trade mark TRAUMEEL.
This case is a reminder that marks sharing the same prefix can be considered deceptively similar, so getting the earlier mark known in New Zealand can be the key to success.
The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.
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