Merial v Virbac

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.