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Kowa Co Ltd v Organon

Kowa Co Ltd v Organon

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FEDERAL COURT OF AUSTRALIA
Kowa Company Ltd v N V Organon [2005] FCA 1282
TRADE MARKS – appeal against a decision of the Trade Marks Office – application for removal of trade mark on ground of non-use – meaning of ‘person aggrieved’ – whether ‘use’ established – Court’s discretion in a non-use application – whether marks substantially identical or deceptively similar – onus in an opposition to registration.
Trade Marks Act 1995 (Cth), ss 6, 72(1), 44, 60, 33(1), 12
Therapeutic Goods Act 1989 (Cth)
Patents Act 1990 (Cth)
Drugs, Poisons and Controlled Substances Act 1981 (Vic)
Shanahan’s Australian Law of Trade Marks & Passing Off (3^rd ed, 2003)
Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50 cited
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 cited
Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166 cited
The Ritz Hotel Ltd v Charles of the Ritz Ltd (1987) 88 ALR 217 cited
Gordon & Rena Merchant Pty Ltd v Ocky Docket (Australia) Pty Ltd (1992) 24 IPR 357 cited
La Cravatte Di Pancaldi SRL v Camiceria Di Pancaldi and B SRL (1999) 45 IPR 533 cited
Kraft Foods Inc (previously known as Kraft General Foods Inc) v Gaines Pet Food Corporation (1996) 34 IPR 198 cited
Upjohn Co v Sanofi (1998) 42 IPR 576 cited
George Weston Foods Ltd v Manildra Flour Mills Pty Ltd (1999) 47 IPR 145 cited
NSW Dairy Corporation v Murray-Goulburn Co-Operative Company (1989) 14 IPR 75 cited
Re J Lyons & Coy Ld’s Application (1959) 76 RPC 120 cited
Lomas v Winton Shire Council [2002] FCAFC 413 cited
Renaud Cointreau and Cie v Cordon Bleu International Ltee (2002) 193 ALR 657 cited
Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd (2003) 204 ALR 90 cited
Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd (2004) 209 ALR 93 cited
McCorquodale v Masterson [2004] FCA 1247 cited
Health World Ltd v Shin-Sun Australia Pty Ltd [2005] FCA 5 cited
BP plc v Woolworths Ltd 62 IPR 545 cited
Clinique Laboratories Inc v Luxury Skin Care Brands Pty Ltd (2004) 61 IPR 130 cited
Jafferjee v Scarlett (1937) 57 CLR 115 cited
The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 cited
Clark v Sharp [1898] 15 RPC 141 cited
Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 cited
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 cited
Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182 cited
McCormick v McCormick (2001) 51 IPR 102 cited
Rysta Ltd’s Application (1943) 60 RPC 87 cited
KOWA COMPANY PTY LTD v N V ORGANON
VID 783 of 2002
LANDER J
13 SEPTEMBER 2005
ADELAIDE (HEARD IN MELBOURNE)

IN THE FEDERAL COURT OF AUSTRALIA

VICTORIA DISTRICT REGISTRY

VID 783 OF 2002

BETWEEN:

KOWA COMPANY LTD
APPLICANT

AND:

N V ORGANON
RESPONDENT

JUDGE:

LANDER J

DATE:

13 SEPTEMBER 2005

PLACE:

ADELAIDE (HEARD…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] FCA 1282
Decision Date: 13 SEPTEMBER 2005

CaseChat Overview and Summary

Kowa Co Ltd (the applicant) sought to register the trade mark LIVALO for prescription pharmaceutical preparations for the treatment of hyperlipidemia. Organon Australia (the respondent) opposed the application, arguing that the proposed trade mark was deceptively similar to its existing trade mark LIVIAL, which is used for products for the treatment of menopausal syndrome. The primary dispute was whether the two trade marks were too similar and would likely cause confusion among consumers and medical professionals.

The legal issues before the court were whether the trade marks were deceptively similar and if the applicant’s proposed use of LIVALO would cause confusion with the respondent's use of LIVIAL. The court had to determine if there was a likelihood of confusion based on the similarities between the trade marks and the nature of the goods they represented. Additionally, the court needed to assess the evidence presented by both parties regarding the use and recognition of the LIVIAL trade mark.

The court found that there was no evidence of any confusion between the two trade marks in the marketplace. It was determined that medical professionals and consumers distinguish between the two trade marks based on their respective uses. The applicant’s proposed use of LIVALO for a different medical condition and the differences in the names of the trade marks were sufficient to prevent confusion. The court relied on expert evidence and the distinct nature of the products to conclude that there was no likelihood of confusion.

Consequently, the appeal was allowed, and the mark LIVALO was registered for goods in Class 5 limited to prescription pharmaceutical preparations for the treatment of hyperlipidemia. The application for partial removal of the respondent’s trade mark LIVIAL from the Register was dismissed. The decision underscored the importance of the specific context and usage of trade marks in determining their distinctiveness and potential for confusion.

Orders

Orders of the court

1. The appeal be allowed.

2. The mark LIVALO be registered for goods in Class 5 limited to prescription pharmaceutical preparations for the treatment of hyperlipidemia.

3. The application for partial removal of the respondent’s trade mark LIVIAL from the Register be dismissed.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

The applicant also referred to the statutory declaration of Ian Peter Horak which was made on 22 April 2003. Mr Horak is a patent attorney and solicitor employed by the applicant’s solicitors. He said in his statutory declaration that enquiries which he had made on behalf of the applicant show that the use of the trade mark LIVIAL is limited to a specific substance known as ‘tibolone’. Tibolone is a synthetic anabolic steroid used in the treatment of menopausal syndrome. He exhibited a copy of the entry for tibolone from Budavari, Susan et al (ed.) ‘The Merck Index, 11th ed., Merck & Co Inc. (1989) which showed that LIVIAL was then regarded as synonymous with tibolone. He also exhibited the 2001 Australian MIMS Annual, 25th ed., June 2001, which indicated that LIVIAL related to a substance for the treatment of symptoms resulting from natural or surgical menopause having the active ingredient tibolone. He concluded his statutory declaration by saying that his enquiries failed to disclose any use of the LIVIAL mark by the respondent for any pharmaceutical products for human use other than tibolone.Respondent’s Evidence The respondent read the affidavits of six witnesses, four of whom were cross-examined. I will also introduce those witnesses and the general nature of their evidence. Mr Darko Katalinic who became the managing director of Organon Australia, a subsidiary of the respondent in August 2000, gave evidence of the registration of the LIVIAL trade mark in Australia. Mr Leon Moore became the marketing and sales director of Organon Australia in 2001. He had previously held other positions in the company. Mr Moore gave evidence of the sales history of LIVIAL and of conferences in Australia at which the LIVIAL product was distributed prior to 11 November 1999. The third affidavit read by the respondent was that of Dr Bjorn Oddens who was the medical director of Organon Australia from October 2000. He gave evidence of potential uses for the product (or goods) sold under the name LIVIAL. The respondent’s fourth witness was Mr Michael Chapman. Mr Chapman is a professor of obstetrics and gynaecology at the University of New South Wales and has held that position for over 10 years. Mr Chapman deposed to having been involved in trials of LIVIAL since 1983. The fifth affidavit read by the respondent was that of Professor Alistair MacLennan, a professor in the department of obstetrics and gynaecology. In his affidavit, Professor MacLennan deposed to the state of knowledge of LIVIAL amongst medical practitioners. Professor MacLennan was not cross-examined. Finally, the respondent relied upon the affidavit of Dr Henry Burger, a specialist in menopause and an honorary professor at Monash University. In his affidavit, he deposed to the state of knowledge of LIVIAL amongst medical practitioners. Dr Burger was also not cross-examined.THE LIVALO AND LIVIAL PRODUCTS Mr Kawaguchi said that the applicant intends to use the LIVALO mark as the name of a preparation manufactured by it and intended to be sold in each country including Australia for the treatment of, but not limited to, hyperlipidemia. ‘Hyperlipidemia’ is a general term for elevated concentration of cholesterol. Dr Stone said that in Australia such a preparation is likely to be only available by prescription.

Decision

Reasons for decision

LANDER J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: LANDER J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY	VID 783 OF 2002

BETWEEN:	KOWA COMPANY LTD APPLICANT
AND:	N V ORGANON RESPONDENT

JUDGE:	LANDER J
DATE:	13 SEPTEMBER 2005
PLACE:	ADELAIDE (HEARD…