Pfizer Products Inc v Joseph Karam

This matter concerned an opposition by Pfizer Products Inc. (the opponent) to the registration of the trade mark "herbagra" by Joseph Karam (the applicant). The opposition was heard by Jock McDonagh, a Hearing Officer acting as a delegate of the Registrar of Trade Marks. The opponent relied on four grounds of opposition, namely those under sections 42(b), 43, 44, and 60 of the *Trade Marks Act 1995* (Cth).

The primary legal issues before the Hearing Officer were whether the proposed use of the "herbagra" trade mark would be contrary to law, specifically by breaching the *Trade Practices Act 1974* (Cth) or constituting passing off, and whether the "herbagra" mark was substantially identical or deceptively similar to the opponent's prior registered trade marks for "Viagra" in respect of similar goods. The opponent argued that the exceptional fame of its "Viagra" marks meant that the use of "herbagra" would lead to public deception and confusion, implying an association with the opponent, thereby causing damage to its goodwill.

The Hearing Officer dismissed the ground of opposition under section 42(b), finding that the opponent had not established that the use of the applicant's mark would constitute a breach of the *Trade Practices Act* or passing off. While acknowledging the extensive reputation of the "Viagra" trade marks, the Hearing Officer concluded that the opponent had not demonstrated a reasonable likelihood of deception or confusion. Similarly, the ground of opposition under section 44 was dismissed, as the Hearing Officer found that the opponent's prior registered trade marks were neither substantially identical nor deceptively similar to the applicant's proposed mark, despite being in respect of similar goods. The remaining grounds of opposition were also formally dismissed.

Consequently, the opposition failed, and the trade mark application was permitted to proceed to registration one month from the date of the decision, subject to any appeal. The Hearing Officer also awarded costs against the opponent in favour of the applicant.