Knoll AG v American Home Products Corporation

Knoll AG (the opponent) opposed the registration of a device trade mark by American Home Products Corporation (now Wyeth, the applicant) for pharmaceutical preparations, including hormonal pharmaceutical preparations. The opposition was based on section 44 of the *Trade Marks Act 1995* (Cth), alleging that the applicant's mark was deceptively similar to the opponent's registered device trade mark, also used for pharmaceutical preparations. The applicant subsequently amended its goods to "Prescription only hormonal pharmaceutical preparations."

The delegate of the Registrar of Trade Marks was required to determine whether the applicant's trade mark was substantially identical with, or deceptively similar to, the opponent's registered trade mark, considering the respective goods and the likelihood of deception or confusion. This involved assessing the visual resemblance of the device marks, the impression they conveyed, the concept of imperfect recollection, and the circumstances of trade in pharmaceutical products.

The delegate considered the evidence and submissions from both parties regarding the visual characteristics of the marks, their potential meanings, and the likelihood of confusion among consumers. The opponent argued that both marks depicted a figure in motion within a circular or oval shape, conveying a similar general impression, and that imperfect recollection was particularly relevant for device-only marks. The applicant contended that the marks conveyed different ideas and impressions, with its mark suggesting motion and vitality, while the opponent's mark could be perceived as an apple or a static figure. The delegate noted that while the opponent's goods were embraced by the applicant's amended goods specification, the crucial issue was deceptive similarity. The delegate also considered the nature of pharmaceutical goods, noting that while they are prescription items, they are handled by various individuals, including pharmacy staff and patients, thus allowing for a potential scope of error.

Ultimately, the delegate found that the applicant's trade mark was not deceptively similar to the opponent's registered trade mark. The delegate concluded that the marks conveyed different overall impressions, with the applicant's mark suggesting motion and vitality, and the opponent's mark being more static or potentially perceived as an apple. The delegate found that the opponent had not discharged its onus of establishing a reasonable likelihood of deception or confusion, and therefore, the opposition was dismissed.