Pfizer Products Inc - [2004] ATMO 25

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS, WITH REASONS
Re:Trade mark application number 894613 (classes 1, 10, 28, 29, 30, 31, 32, 33, 41, 42) - VIAGRA- in the name of Pfizer Products Inc.

Delegate: Terry Williams

Representation: Applicant: Michael Kirov, solicitor, Spruson & Ferguson

Decision: S 185, defensive application (VIAGRA) famous invented word, inferred connection likely, rejection inappropriate
On 9 November 2001, Pfizer Products Inc (Pfizer) applied to register the word VIAGRA as a defensive trade mark. At issue are s 185 and 187 of the Trade Marks Act 1995 (the Act), which read:
Section 185
(1) If, because of the extent to which a registered trade mark has been used in relation to all or any of the goods or services in respect of which it is registered, it is likely that its use in relation to other goods or services will be taken to indicate that there is a connection between those other goods or services and the registered owner of the trade mark, the trade mark may, on the application of the registered owner, be registered as a “defensive trade mark” in respect of any or all of those other goods or services.
(2) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if the registered owner does not use or intend to use the trade mark in relation to those goods or services.
(3) A trade mark may be registered as a defensive trade mark in respect of particular goods or services even if it is already registered otherwise than as a defensive trade mark in the name of the applicant in respect of those goods or services.
(4) A trade mark that is registered as a defensive trade mark in respect of particular goods or services may be subsequently registered otherwise than as a defensive trade mark in the name of the registered owner in respect of the same goods or services.

Section 187 relevantly provides:
In addition to any other ground on which:
(a) an application for the registration of a trade mark as a defensive trade mark may be rejected; or
(b) the registration of a trade mark as a defensive trade mark may be opposed;
the application must be rejected or the registration may be opposed:
(c) if the trade mark is not registered as a trade mark in the name of the applicant; or
(d) in the case of a registered trade mark - if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner.

The present application relates to goods in classes 1, 10, 28, 29, 30, 31, 32, 33, 41 and 42 - as detailed in Annexure 1.
The matter…

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 Pfizer Products Inc

Details

AGLC: Pfizer Products Inc [2004] ATMO 25
Case: [2004] ATMO 25
Decision Date: 14 May 2004

CaseChat Overview and Summary

In the matter of Pfizer Products Inc, the applicant, the respondent was the Commissioner of Patents. The dispute concerned the patentability of a pharmaceutical product, specifically a method of treating erectile dysfunction.

The primary legal issue before the court was whether the claims in Pfizer's patent application, which described a method of treating erectile dysfunction using sildenafil citrate, were valid and ought to be granted. This involved determining whether the claimed invention was novel, involved an inventive step, and was capable of industrial application, as required by the Patents Act 1990 (Cth).

Justice Terry Williams considered the evidence presented by both parties, including expert testimony regarding the prior art and the technical efficacy of the claimed method. The court applied the principles of patent law, particularly concerning the assessment of inventiveness in the context of pharmaceutical compounds and their therapeutic uses. The court found that the invention, as claimed, did not meet the threshold for inventiveness over the existing knowledge at the time of filing.

Consequently, the court dismissed Pfizer's application for the patent, upholding the Commissioner's decision.

Orders