Sanofi-Aventis v Eremad Pty. Ltd

This matter concerned an opposition by Sanofi-Aventis (the opponent) to a trade mark application by Eremad Pty. Ltd (the applicant) for the mark "CLOGREL". The dispute centred on whether the applicant's proposed trade mark was inherently adapted to distinguish the applicant's goods from those of other traders, and whether the application was made in bad faith, primarily due to the mark's similarity to the internationally recognised generic descriptor "Clopidogrel" used for pharmaceutical substances. The decision was made by Hearing Officer T. E. Williams.

The legal issues before the court were whether the trade mark "CLOGREL" was inherently adapted to distinguish the applicant's goods under section 41 of the *Trade Marks Act 1995* (Cth), and whether the application was made in bad faith under section 62A of the Act. The opponent argued that the mark was too similar to the International Non-proprietary Name (INN) "Clopidogrel", which is in the public domain and used as a generic descriptor for a class of drugs. This similarity, the opponent contended, meant the mark was not capable of distinguishing the applicant's goods and that the applicant's pattern of seeking such marks constituted bad faith.

The Hearing Officer reasoned that while the mark "CLOGREL" bore a resemblance to the INN "Clopidogrel", it did not fall into the categories of marks that were either identical, substantially identical, or deceptively similar to the extent that they would cause outright mistake or confusion in the context of prescription pharmaceuticals. The Hearing Officer found that the nature of the goods and the prescription process would mitigate the risk of confusion, and that any perceived resemblance would likely connote that the product contained Clopidogrel, rather than indicating a lack of distinctiveness. Regarding the bad faith ground, the Hearing Officer found that the applicant's conduct did not amount to a deliberate attempt to mislead or imitate another trader's mark, distinguishing it from the "deliberate misspellings" example in the Explanatory Memorandum.

Ultimately, the Hearing Officer concluded that the opponent had not established either ground of opposition. The trade mark application was permitted to proceed to registration, and costs were awarded against the opponent.