Pfizer, Inc v Schering-Plough Animal Health Corporation

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.