Pfizer, Inc v Schering-Plough Animal Health Corporation

Case [2006] ATMO 92

TRADE MARKS ACT 1995



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

Re:Application 990368(5) Scabine to register a trade mark by Schering-Plough Animal Health Corporation and opposition thereto by Pfizer Inc.

Delegate: Iain Thompson
Representation: Applicant.  Albert Terry of Griffith Hack
Opponent:  Francis Drummond of Freehills
Decision: 1. s52 proceedings – ss 44 and 60 – opposition not established.

Background

  1. Schering-Plough Animal Health Corporation (‘the applicant’) of New Jersey, United States of America, has filed application to register a trade mark, current details of which are:

    App No:  990368

    Filing Date:  24 February 2004

    Goods:Class: 5 Veterinary preparations, including veterinary vaccines for use in livestock

    Trade Mark:  SCABINE

  2. Following advertisement of acceptance of the trade mark for possible registration on 24 June 2004, Pfizer Inc, served and filed Notice of Opposition to registration of the trade mark on 15 September 2004.  The parties have served and filed evidence in relation to the opposition in accordance with the Trade Marks Act 1995 (‘the Act’) and regulations thereto. 

  3. At the hearing in Sydney on 17 October 2006, Albert Terry of Griffith Hack represented the applicant; Francis Drummond of Freehills represented the applicant.

  4. The submissions of the opponent focussed on sections 44 and 60 of the Act.

    Evidence

  5. The evidence comprises statutory declarations in support by Frances Mcneill Drummond with Annexures A; Arthur A. Silverstein with Annexures A to D, Confidential Annexures E to I, Annexures J to O, Confidential Annexure P and Annexures Q to R; Frances Mcneill Drummond with Annexure A; and, Arthur A Silverstein with Confidential Annure A, Annexures B & C, Confidential Annexure C1, Annexures D, E & F.  There is one declaration in answer by Roger Sargent with Annexures A to F and declarations in reply by Jason Lesley Edwards, Richard Hyles, Chris Clarke, Roger Willoughby, Alister Birman, and Dr Jim Mcdonald.

    Common Ground

  6. The following facts appear to be agreed between the parties or are not in contention. 

  7. The opponent has, since 1997, sold a vaccine to Australian farmers and graziers for use in protecting sheep and goats against the disease ‘scabby mouth’ under the trade mark SCABIGARD.  Sales of this product under the trade mark SCABIGARD by the opponent have been extensive and the reputation of the trade mark SCABIGARD is not contested by the applicant.

  8. The sales are through a variety of channels such as veterinaries, produce stores, farmers’ suppliers and so forth.

  9. The opponent has the following trade mark registrations in Australia which are related to these proceedings:

    Reg No:  575545
    Priority Date:             31 March 1992
    Goods/Services:         Class: 5   All goods in this class
    Trade Mark:               SCABIVAC T.C.

    Reg No:  733403
    Priority Date:             29 April 1997
    Goods/Services:         Class: 5   Veterinary preparations and substances; veterinary vaccines
    Trade Mark:               SCABORF

    Reg No:  622534
    Priority Date:             14 February 1994
    Goods/Services:         Class: 5   All goods in this class
    Trade Mark:               SCABIGARD

  10. The opponent had not used the first two trade marks in Australia in the above list before the priority date of…

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Details
AGLC
Pfizer, Inc v Schering-Plough Animal Health Corporation [2006] ATMO 92
Case
[2006] ATMO 92
Decision Date

CaseChat Overview and Summary

Pfizer, Inc. (the applicant) sought to register the trade mark SCABIVAC T.C. in Class 5 for veterinary preparations and substances, specifically veterinary vaccines. Schering-Plough Animal Health Corporation (the opponent) opposed this application, relying on its registered trade marks SCABIGARD, SCABORF, and SCABIVAC T.C., all in Class 5. The opposition was based on grounds under sections 44 and 60 of the relevant Act. The hearing officer was required to determine whether the opponent's trade marks, individually or collectively, were deceptively similar to the applicant's opposed trade mark.

The hearing officer reasoned that the opponent's argument for collective consideration of its trade marks as a family could not succeed because only the SCABIGARD trade mark had been used in Australia, while SCABORF and SCABIVAC T.C. had not. Therefore, the central question was whether the opponent's trade marks, considered individually, were deceptively similar to the applicant's opposed trade mark. Given that the reputation of the opponent's SCABIGARD trade mark was not contested, and the trade marks were not alleged to be substantially identical, and the goods were not the same, the focus was on the deceptive similarity of the marks themselves.

Ultimately, the hearing officer found that the trade marks on which the opponent relied were not deceptively similar to the opposed trade mark. As the applicant was successful in these proceedings, the hearing officer ordered that the trade mark proceed to registration, subject to any appeal, and ordered 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 submissions of the opponent focussed on sections 44 and 60 of the Act. Evidence The evidence comprises statutory declarations in support by Frances Mcneill Drummond with Annexures A; Arthur A. Silverstein with Annexures A to D, Confidential Annexures E to I, Annexures J to O, Confidential Annexure P and Annexures Q to R; Frances Mcneill Drummond with Annexure A; and, Arthur A Silverstein with Confidential Annure A, Annexures B & C, Confidential Annexure C1, Annexures D, E & F. There is one declaration in answer by Roger Sargent with Annexures A to F and declarations in reply by Jason Lesley Edwards, Richard Hyles, Chris Clarke, Roger Willoughby, Alister Birman, and Dr Jim Mcdonald.Common Ground The following facts appear to be agreed between the parties or are not in contention. The opponent has, since 1997, sold a vaccine to Australian farmers and graziers for use in protecting sheep and goats against the disease ‘scabby mouth’ under the trade mark SCABIGARD. Sales of this product under the trade mark SCABIGARD by the opponent have been extensive and the reputation of the trade mark SCABIGARD is not contested by the applicant. The sales are through a variety of channels such as veterinaries, produce stores, farmers’ suppliers and so forth. The opponent has the following trade mark registrations in Australia which are related to these proceedings:Reg No: 575545Priority Date: 31 March 1992Goods/Services: Class: 5 All goods in this classTrade Mark: SCABIVAC T.C.Reg No: 733403Priority Date: 29 April 1997Goods/Services: Class: 5 Veterinary preparations and substances; veterinary vaccinesTrade Mark: SCABORFReg No: 622534Priority Date: 14 February 1994Goods/Services: Class: 5 All goods in this classTrade Mark: SCABIGARD The opponent had not used the first two trade marks in Australia in the above list before the priority date of this opposed application. The sheep disease ‘scabby mouth’ (contagious ecthyma, occasionally called ‘orf’) is a highly contagious, viral disease of sheep, goats, and occasionally humans. The opponent’s vaccine is ‘live’ – that is, it is a mild form of the infection to provoke an immune response which protects against a severe form of the disease.Grounds The opponent pursued grounds under section 44 and 60 at the hearing. Given that the reputation of the opponent’s trade mark SCABIGARD at the priority date of the opposed application is not in contention; nor is it alleged that the trade marks in question are substantially identical; nor is it in dispute that the goods in question are not the same goods; nor that the trade mark registrations on which the opponent relies have earlier priority dates than the opposed application, the question confronting me resolves itself to essentially one question: are the trade marks on which the opponent relies individually or collectively deceptively similar to the opposed trade mark.? The latter part of this question can be disposed of immediately. The trade marks on which the opponent relies cannot be collectively considered as a family of trade marks as the argument depends upon the trade marks on which the opponent relies being used and a likelihood of recognition by the public of the common feature as being identified with the opponent and stemming from that use. The opponent’s SCABIGARD trade mark is in use in Australia; however, its SCABORF and SCABIVAC T.C. trade marks are not.

Decision

Reasons for decision

Section 55 of the Act provides:Decision55. Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:(a) to refuse to register the trade mark; or(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;having regard to the extent (if any) to which any ground on which the application was opposed has been established.Note: For limitations see section 6. The trade mark may, subject to any appeal against this decision, proceed to registration. If this decision is appealed, the disposition of the application should be in accordance with the orders of the Court.Costs As the applicant has been successful in these proceedings, I order costs against the opponent.Iain ThompsonHearing OfficerTrade Marks Hearings4 December 2006

Ratio Decidendi

Legal Principle Established

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