Kowa Co Ltd v Organon

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.