Pfizer Products Inc v Karam

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.