Merck KGaA v Sicor Inc - [2006] ATMO 26

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Merck KGaA to registration of trade mark application 916123(5),(40) SICOR, proceeding in the name of Sicor, Inc.

Delegate:

Ian Thompson

Representation:

Opponent
Kim Edwards of Davies Collison Cave.
Applicant
Written submissions from Deborah Jackson of Spruson & Ferguson.

Decision:

1. section 44 opposition not established

2. costs ordered against opponent

Background

Sicor, Inc ('the applicant') of Irvine, California, has filed an application to register a trade mark, current details of which are:

App No:  916123
Filing Date:  12 June 2002
Acceptance Advert:               17 July 2003

Goods/Services: Class: 5 Pharmaceutical preparations and substances for the diagnosis and treatment of cardiovascular diseases, cerebrovascular diseases, seizure disorders, neurological diseases and disorders, diabetes and other metabolic disorders, inflammatory diseases, autoimmune diseases, viral diseases, cancer, shock and central nervous system trauma and peripheral vascular diseases
Class: 40Custom manufacture of pharmaceuticals for others

Trade mark: SICOR

On 14 October 2003 Merck KGaA ('the opponent'), filed Notice of Opposition (‘the Notice’) to the registration of the trade mark. The Notice cites several grounds under the Trade Marks Act 1995 (‘the Act’) and that listed in the information panel, at the head of this decision, was pursued at the hearing. For the sake of completeness, I now find that the opponent has not established those remaining grounds listed in the Notice.
Evidence in support, evidence in answer and evidence in reply were duly served and filed according the Act and regulations thereto.
The hearing was held before me, as a delegate of the Registrar of Trade Marks, in Sydney, on 19 October 2006. Deborah Jackson of Spruson & Ferguson filed written submissions on behalf of the applicant and Ms Kim Edwards of Davies Collision Cave represented the opponent.

Evidence

I will not detail the evidence in this matter as the grounds pursued at the hearing are under section 44 and it is not alleged that the opponent’s trade mark is notorious[1].
[1] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539
Relevantly, the opponent is the registered owner of an Australian trade mark registration, details of which appear below:

Reg Number 842916
Priority date: 18 July 2000

Goods/Services: Class: 5 Pharmaceuticals for human use
Trade Mark: BICOR

Reasons

Section 44

I agree with the parties that the scope and priority dates of the opponent’s registrations effectively limits considerations here to issues concerning the deceptive similarity of the trade marks.
Section 10 defines deceptive similarity in the following terms:

10 Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

The assessment of trade marks for deceptive similarity explained by the Courts in the following way in Melbourne Chinese Press Pty Ltd v Australian Chinese Newspapers Pty Ltd [2004] FCAFC 201 at paragraph 16:
The…

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.

Continue reading Merck KGaA v Sicor Inc

Details

AGLC: Merck KGaA v Sicor Inc [2006] ATMO 26
Case: [2006] ATMO 26
Decision Date: 28 March 2006

CaseChat Overview and Summary

Merck KGaA (Merck) sought an interlocutory injunction against Sicor Inc (Sicor) to restrain the importation and sale of a generic version of Merck's drug, Losec (omeprazole). The dispute concerned allegations of patent infringement and misleading and deceptive conduct. The matter came before Ian Thompson in the Federal Court of Australia.

The primary legal issues before the Court were whether Merck had established a strong prima facie case of patent infringement and whether the balance of convenience favoured granting an interlocutory injunction. Specifically, the Court had to consider the scope of Merck's patent claims and whether Sicor's product fell within that scope, as well as the potential harm to both parties if an injunction was granted or refused.

In determining the application, the Court applied the principles governing interlocutory injunctions, including the need for a strong prima facie case or a serious question to be tried, and the balance of convenience. The Court considered the evidence presented by both parties regarding the technical aspects of the patents and the potential market impact of the generic product. The assessment of the balance of convenience involved weighing the potential loss of market share and goodwill for Merck against the potential financial losses and market entry difficulties for Sicor.

The Court ultimately refused to grant the interlocutory injunction sought by Merck.

Orders