Aventis Pharma SA v Alphapharm Pty Ltd

In an opposition proceeding before a Hearing Officer, Aventis Pharma SA opposed the registration of a trade mark sought by Alphapharm Pty Ltd. The dispute concerned whether Alphapharm's proposed trade mark, when used in relation to pharmaceutical goods, would be likely to deceive or be misleading, contrary to section 43 of the *Trade Marks Act 1995* (Cth).

The Hearing Officer was required to determine whether the use of the trade mark by Alphapharm would be likely to deceive or be misleading. This involved considering the evidence presented in the opposition forum and assessing the potential for confusion or misrepresentation to consumers regarding the nature or origin of the goods.

The Hearing Officer reasoned that a restriction on the use of the trade mark was necessary to prevent any reasonable apprehension that its use would be misleading or deceptive. Applying the distinction between what a trade mark "could" do and what it "would" do, as drawn in *Advantage Rent-A-Car Inc v Advantage Car Rental*, the Hearing Officer found that the section 43 ground had been established to a limited degree. Consequently, the Hearing Officer ordered that the trade mark be registered subject to the condition that it would only be used on goods of which the antibiotic component is ROXITHROMYCIN. The application was to be endorsed accordingly and proceed to registration one month after the decision, unless an appeal was filed. Given that both parties had achieved some success, no order for costs was made.