Roche Products Limited v Hylebut Pty Limited

Roche Products Limited (the applicant) sought to register a trade mark, which was opposed by Hylebut Pty Limited (the opponent). The dispute concerned the potential for the applicant's proposed trade mark to cause deception or confusion, given the opponent's established trade mark. The matter was heard by Don Nancarrow.

The court was required to determine whether the applicant's proposed trade mark was deceptively similar to the opponent's registered trade mark, VALIUM, and whether, due to the reputation of the VALIUM trade mark, the use of the applicant's trade mark would be likely to deceive or cause confusion. The court also considered the relevance of a device element in the applicant's proposed mark and the extent of the reputation of the VALIUM trade mark in the Australian market for pharmaceuticals treating anxiety and tension.

The court found that the respective trade marks were substantially identical in their word components, with only minor differences in font. The device element in the applicant's mark, depicting a relaxed person, was considered to add little to visual differentiation and, in fact, could reinforce the conceptual link to the relaxing effect of the opponent's pharmaceutical products. Applying the concept of 'contextual confusion', the court concluded that the trade marks were deceptively similar. The court acknowledged the impressive reputation of the VALIUM trade mark, supported by substantial use since 1963 and significant public recognition demonstrated through various publications. The central question then became whether the applicant's proposed use of its trade mark, given the VALIUM trade mark's reputation, would likely deceive or cause confusion.

The court found that the respective trade marks were deceptively similar and that, due to the strong reputation of the VALIUM trade mark, the use of the applicant's trade mark would be likely to deceive or cause confusion. Consequently, the opposition was successful.