INTELLECTUAL PROPERTY – trade marks – ‘VIAGRA’ – reputation in Australia – ‘HERBAGRA’ deceptively similar to and likely to deceive or cause confusion – appeal allowed
INTELLECTUAL PROPERTY – trade marks – whether reputation should be taken into account in relation to s 44 of the Trade Marks Act 1995 (Cth) – if not, marks not deceptively similar
INTELLECTUAL PROPERTY – trade marks – mark not likely to deceive or cause confusion because of connotation
INTELLECTUAL PROPERTY – trade marks – standard of proof in appeal from opposition proceedings – opponent must establish ground of opposition – no need to ‘clearly’ establish ground
[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.
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Details
AGLC
Pfizer Products Inc v Karam [2006] FCA 1663
Case
[2006] FCA 1663
Decision Date
CaseChat Overview and Summary
The case of Pfizer Products Inc v Karam involved an appeal against a decision of the Delegate of the Registrar of Trade Marks, who had refused to register a trade mark application submitted by Karam. The dispute centred on the registration of the trade mark “HERBAGRA” for sexual enhancement products, which Pfizer opposed on the grounds of deceptive similarity to its well-established trade mark “VIAGRA.” The case was heard in the Federal Court of Australia.
The primary legal issues addressed in the case were the application of sections 43, 44, and 60 of the Trade Marks Act 1995 (Cth) in determining whether Karam’s trade mark “HERBAGRA” was deceptively similar to Pfizer’s “VIAGRA.” Section 44(1) pertains to the comparison of marks, while section 60 involves the reputation of the earlier mark. Section 43, less frequently cited, focuses on the secondary meaning or connotation of the trade mark. The court needed to discern whether the use of “HERBAGRA” would likely deceive or cause confusion due to its similarity to “VIAGRA,” considering both the direct comparison of the marks and the established reputation of “VIAGRA.”
The court found that while “VIAGRA” was indeed well-known and held a substantial reputation in Australia, this did not extend to the secondary meanings argued by Pfizer. The court concluded that there was no secondary meaning connoted by “HERBAGRA” that would imply sponsorship or association with Pfizer’s products. Therefore, the application for the registration of “HERBAGRA” should be refused. The appeal was allowed, and the decision of the Delegate was reversed.
The court ordered that the appeal be allowed, the decision of the Delegate reversed, the orders of the Delegate set aside, and the application to register the trade mark refused. Additionally, the court ordered that Karam pay Pfizer’s costs of the appeal and the opposition proceedings before the Delegate.
Orders
Orders of the court
1. The appeal be allowed.
2. The decision of the Delegate of the Registrar of Trade Marks be reversed and the orders of the Delegate be set aside.
3. The application to register the trade mark be refused.
4. The respondent pay the applicant’s costs of this appeal and of the opposition proceedings before the Delegate of the Registrar of Trade Marks.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
The grounds of opposition which are pressed on this appeal are those provided by ss 43, 44 and 60. There is an obvious overlap between the three and it is useful to briefly note the relationship between them. What is the difference between s 44 and s 60? In the present case, the marks are not substantially identical, therefore, the issue is deceptive similarity. Section 60 depends upon the opponent’s mark having acquired a reputation in Australia by virtue of which the use of the trade mark applied for would be likely to deceive or cause confusion because of the deceptive similarity between them. Section 44(1) refers to deceptive similarity between the applicant’s mark and a mark registered by another person in respect of similar goods. In other words, the comparison is between mark and mark, not between mark and reputation. Where does s 43 fit it in? The focus of this section is a connotation or secondary meaning of the mark applied for which would make the use of the trade mark in respect of particular goods likely to deceive or cause confusion. There is a plethora of authority concerning s 44 and s 60. There is little authority as to s 43. EVIDENCE Pfizer relied upon the evidence of Arthur Silverstein, an in-house lawyer, to provide evidence of use and reputation of the VIAGRA trade mark and the product with which it is associated internationally and the evidence of Sally Glover, an in-house lawyer, regarding the reputation of the VIAGRA trade mark in Australia. Silverstein dealt with the history, advertising and promotion of the product, advertising expenditure, sales of the product, trade mark registrations and, in relation to the reputation of VIAGRA, attached a representative sample of articles mentioning the product which have appeared in various United States publications with international circulations from newspapers, magazines and medical publications. Glover dealt with the history of VIAGRA, advertising of the product in Australia, the sales of the product bearing the trade mark in Australia, Australian trade mark protection and the reputation of VIAGRA. A good deal of material was produced in relation to reputation including market research, radio transcripts, media reports covering print and electronic media and the internet. Evidence also establishes that Pfizer is the only owner of a trade mark registration class 5 for a mark containing the ‘-AGRA’ suffix. The product in relation to which Pfizer uses the trade mark was the first oral treatment for erectile dysfunction, both in Australia and internationally. ‘VIAGRA’ is an invented word. The product was launched in Australia in September 1998. The delegate, having considered that material, was satisfied that the VIAGRA marks were very well known in Australia and enjoyed a considerable reputation, both literally and for the purposes of the 1995 Act. I can only agree. Karam does not dispute that conclusion as such. However, it is submitted that the reputation relates to a particular medical treatment for a particular medical condition available only on prescription from pharmacies. It is submitted for Pfizer that the reputation of VIAGRA is not limited to that strict core but has gained a wider reputation as being associated with sexual health and performance generally, including enhancement of sexual performance on the part of both males and females and the reputation is not limited to a prescription by medical practitioners available only in pharmacies. Counsel for Pfizer has pointed to examples in the material produced by Glover which would support such a wider reputation.
Decision
Reasons for decision
GYLES J
In my opinion, there is no relevant secondary meaning connoted by the mark HERBAGRA. An implication of sponsorship or association might qualify as such a secondary meaning or connotation, but I am not persuaded that the mark itself has that secondary meaning here.CONCLUSION The appeal should be allowed, the decision of the Delegate reversed and the orders of the Delegate set aside. The application to register the trade mark should be refused. Karam should pay Pfizer’s costs of this appeal and of the opposition proceedings before the Delegate.