Merial v Virbac

Case [2012] ATMO 83

TRADE MARKS ACT 1995



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

Re:Opposition by MERIAL to extension of protection of International Registration Designating Australia 1373284 (IR No. 1032318) (5) - FIPROLINE - filed in the name of VIRBAC.

Delegate: Heath Wilson
Representation: Opponent: Peter Hallett of Watermark, Patent & Trade Marks Attorneys
Holder: Ken Hamilton of Spruson & Ferguson, Patent & Trade Marks Attorneys
Decision: 2012 ATMO 83
Reg 17A.34 opposition – grounds pursued under sections 44, 60, 43 and 42(b) of the Trade Marks Act 1995 – none established – IRDA protection extended to Australia – costs awarded against opponent.  

Background

  1. This an opposition under regulation 17A.34 of the Trade Marks Regulations 1995 (‘the Regulations’) to an application for the extension of protection of the following International Registration Designating Australia (‘IRDA’):

    IRDA No:               1373284 (International Registration No. 1032318)

    Filing Date:             15 April 2010

    Specification:          Class 5: Veterinary preparations, particularly an antiparasitic preparation for external use.

    Holder:                    Virbac

    Trade Mark:           FIPROLINE (‘the Trade Mark’)

  2. The above IRDA was examined, and the acceptance was advertised in the Australian Official Journal of Trade Marks on 19 August 2010. On 18 November 2010, the Trade Mark was opposed by Merial (‘the Opponent’) under Regulation 17A.29, nominating all possible grounds of opposition.

  3. Regulation 17A.31 sets out the grounds for opposing an IRDA. These grounds include sections 39 to 44 inclusive of the Trade Marks Act 1995 (‘the Act’), (by virtue of regulations 17A.31 (1) and 17A.28 (1)), and sections 58 to 62A of the Act (by virtue of regulation 17A.31 (2)).

    Evidence

  4. The following evidence was filed and served by the parties:

    Evidence in Support

    ·    Statutory declaration of Anne-Sophie Chacornac (Legal Counsel of the Opponent) dated 7 February 2011 with annexures A to F.

    ·    Statutory declaration of Michael Fisher (Associate Director of Merial Australia Pty Ltd) dated 15 February 2011 with exhibits MF-1 to MF-7.

    Evidence in Answer

    ·    Statutory declaration of Catherine Marie Sedgley (employee of Spruson & Ferguson) dated 13 May 2011 with exhibits CS-1 to CS-5.

    Evidence in Reply

    ·    Statutory declaration of Anne-Sophie Chacornac dated September 2011.

    Grounds and Onus

  5. The Opponent indicated via written submissions filed prior to the hearing that it was only pursuing the grounds of opposition under sections 42(b), 43, 44 and 60 of the Act. The Opponent bears the onus of establishing one or more of those grounds on the balance of probabilities.[1]

    [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10].

  6. I heard the opposition to the IRDA on 13 July…

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Details
AGLC
Merial v Virbac [2012] ATMO 83
Case
[2012] ATMO 83
Decision Date

CaseChat Overview and Summary

Merial (the Opponent) opposed the registration of an International Registration Designating Australia (IRDA) trade mark, FIPROLINE, owned by Virbac (the Holder). The opposition was heard by Heath Wilson, acting as a delegate of the Registrar of Trade Marks. The Opponent pursued grounds of opposition under sections 42(b), 43, 44, and 60 of the relevant Act, bearing the onus of establishing these grounds on the balance of probabilities.

The primary legal issues before the delegate were whether the FIPROLINE trade mark was substantially identical with, or deceptively similar to, any of the Opponent's registered trade marks for similar or closely related goods or services, pursuant to section 44 of the Act, and whether the FIPROLINE trade mark was likely to deceive or cause confusion, pursuant to section 60 of the Act. The delegate noted that the Opponent conceded the trade marks were not substantially identical on a side-by-side comparison, meaning the success of the section 44 ground depended on establishing deceptive similarity.

The delegate found that the Opponent had not established any of the grounds of opposition. Specifically, regarding section 44, the delegate agreed with the Opponent's concession that the trade marks were not substantially identical and found that the Opponent had failed to establish deceptive similarity between its FRONTLINE trade marks and the FIPROLINE trade mark. The delegate also found that the remaining grounds of opposition were not established on the evidence or submissions.

Consequently, the delegate directed that protection of the IRDA be extended to Australia for all goods listed in the IRDA, one month from the date of the decision, subject to any appeal. The Holder was awarded costs against the Opponent.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The following evidence was filed and served by the parties:Evidence in Support· Statutory declaration of Anne-Sophie Chacornac (Legal Counsel of the Opponent) dated 7 February 2011 with annexures A to F.· Statutory declaration of Michael Fisher (Associate Director of Merial Australia Pty Ltd) dated 15 February 2011 with exhibits MF-1 to MF-7.Evidence in Answer· Statutory declaration of Catherine Marie Sedgley (employee of Spruson & Ferguson) dated 13 May 2011 with exhibits CS-1 to CS-5.Evidence in Reply· Statutory declaration of Anne-Sophie Chacornac dated September 2011.Grounds and Onus The Opponent indicated via written submissions filed prior to the hearing that it was only pursuing the grounds of opposition under sections 42(b), 43, 44 and 60 of the Act. The Opponent bears the onus of establishing one or more of those grounds on the balance of probabilities.[1] [1] Following Gyles J in Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26] and Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10]. I heard the opposition to the IRDA on 13 July 2012 in Canberra as a delegate of the Registrar of Trade Marks. The Opponent was represented via teleconference by Peter Hallett of Watermark Patent & Trade Mark Attorneys. Ken Hamilton of Spruson & Ferguson, Patent and Trade Marks Attorneys appeared in person on behalf of the Holder. I will primarily discuss the sections 44 and 60 being the grounds that were addressed in the most detail at the hearing. For the sake of completeness, I find that the remaining grounds in the notice of opposition have not been established on the evidence or submissions before me. ReasonsSection 44 Subsection 44(1) of the Act provides:Identical etc. trade marks(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:(a)the applicant’s trade mark is substantially identical with, or deceptively similar to:(i)a trade mark registered by another person in respect of similar goods or closely related services; or(ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services. In support of the section 44 ground of opposition, Mr Hallett cited the following trade marks (owned by the Opponent) which he argued were deceptively similar to the Trade Mark: The Opponent’s trade marks all have earlier priority dates than the Trade Mark, and the goods of the Trade Mark and of the Opponent’s trade marks are the same or of the same description. The Opponent conceded in the course of its submissions that the respective trade marks were not substantially identical on a side-by-side comparison. I agree. Consequently, in order for the ground of opposition under section 44 to be successful, the Opponent must establish that its trade marks comprising or consisting of the element FRONTLINE are deceptively similar to FIPROLINE.

Decision

Reasons for decision

Regulation 17A.34 states that: Decision on opposition(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.(2)The Registrar must tell the International Bureau of his or her decision. The Opponent has not established a ground of opposition under the Act. I therefore direct that under the provisions of regulation 17A.34 (1)(b) protection of IRDA no. 1373284 (IR No. 1032318) be extended to Australia with respect to all the goods listed in the IRDA one month from the date of this decision. If the Registrar is served with a notice of appeal before protection is extended, I direct that protection shall not occur until the appeal is withdrawn or discontinued. Otherwise I direct that extension of protection of the IRDA be subject to any orders of the court. Costs The Holder has been successful in this opposition matter. I award costs against the Opponent to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995. Heath WilsonHearing OfficerTrade Marks Hearings25 September 2012

Ratio Decidendi

Legal Principle Established

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