Abbott Biologicals BV v Novartis AG

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Abbott Biologicals B.V. to extension of protection to Australia of trade mark application 1537335(5) – INFLUGARD (IR No. 1145274) - filed in the name of Novartis AG.

Delegate:	Hearing Officer: Nicole Worth
Representation:	Opponent: N/A Holder: Christine Lowe of Davies Collison Cave Patent & Trade Mark Attorneys.
Decision:	2014 ATMO 60 Opposition under Regulation 17A.33 – grounds of opposition under sections 44 and 60 – no grounds established – protection to be extended to Australia.

Background

1. This is a decision pursuant to regulation 17A.33 of the Trade Marks Regulations 1995 (‘the Regulations’). Regulation 17A.34 provides that the extension of protection to Australia of an international trade mark registration may be opposed on any of the grounds for rejection (sections 39 to 44) or grounds of opposition (sections 58 to 61 and 62A) in the Trade Marks Act 1995 (‘the Act’).

2. Novartis AG (‘the Holder’) has applied to extend protection to Australia of its international registration 1145274. Such an application is called an International Registration Designating Australia (an ‘IRDA’), and the details of the Holder’s IRDA are as follows:

   Trade Mark:          INFLUGARD (‘the Trade Mark’)

   IRDA No.:              1537335

   Goods:  Vaccines for human use, in class 5

   Priority Date:         17 December 2012

3. The IRDA was examined and accepted for possible extension of protection to Australia. The acceptance was advertised in the Australian Official Journal of Trade Marks on 11 April 2013.

4. On 15 April 2013 Abbot Biologicals B.V. (‘the Opponent’) filed a Notice of Intention to Oppose and a Statement of Grounds and Particulars, in accordance with amendments to the Act and Regulations which came into force on that day. The Statement of Grounds and Particulars particularised grounds of opposition under sections 44 and 60, as follows (note that the references to “INFLUVAX” should be “INFLUVAC”):

   Section 44

   The opponent is the owner of Australian trade mark registrations 175942 INFLUVAX in class 5 and 1075176 INFLUVAX POWER TO PROTECT device in classes 5, 16 and 41 (the opponent’s registrations). The applicant’s INFLUGARD trade mark is substantially identical with, or deceptively similar to, the trade marks of the opponent’s registrations. The goods of the INFLUGARD application, ‘vaccines for human use’, are similar to the goods of the opponent’s registrations or are closely related to the services of the opponent’s 1075176 registration. The opponent’s registrations have a priority date before the applicant’s INFLUGARD application.

   Section 60

   The opponent’s INFLUVAX trade mark, including as shown in registrations 175942 and 1075176, has acquired a reputation in Australia. The reputation for INFLUVAX is in respect of vaccines, as well as publications and educational material and training and education related to pharmaceuticals and vaccination. The acquired reputation for the INFLUVAX trade mark has existed since at least 2010 and before the priority date of the INFLUGARD application. The reputation for the INFLUVAX trade mark means use of INFLUGARD would be likely to deceive or cause confusion.

5. The Holder filed a…