Merck KGaA v Generic Health Pty Ltd

Merck KGaA (the applicant) sought to register the trade mark SASTIN, while Alphapharm Pty Ltd (the opponent) opposed this application. The dispute concerned whether the proposed trade mark SASTIN was deceptively similar to the opponent's registered trade mark ZACTIN, which was used for pharmaceutical preparations for the treatment of major depressant disorders and obsessive compulsive disorders. The matter was heard by Ian Thompson, Hearing Officer, at Trade Marks Hearings.

The primary legal issues before the Hearing Officer were whether the applicant's trade mark SASTIN infringed sections 44 and 60 of the relevant Act. Section 44 typically deals with the registration of trade marks that are identical or deceptively similar to earlier trade marks, while section 60 addresses the use of trade marks that are likely to deceive or cause confusion. The opponent argued that the similarity between SASTIN and ZACTIN would lead to confusion among patients, pharmacists, and doctors, particularly given the serious nature of the conditions treated by the respective pharmaceuticals and the potential for dangerous contraindications.

The Hearing Officer found that the evidence presented by the opponent, particularly the statutory declarations from dispensing pharmacists, lacked sufficient probative weight. These declarations were in a common form, with pre-printed statements suggesting similarity, and did not clearly articulate personal confusion on the part of the declarants. Instead, they expressed an opinion about potential confusion among others. Consequently, the Hearing Officer determined that the opponent had not established its grounds of opposition under sections 44 and 60 of the Act.

As the applicant was successful in the proceedings, the Hearing Officer ordered that the trade mark application number 1041864 proceed to registration one month from the date of the decision, unless an appeal was filed. The opponent was ordered to pay the applicant's costs.