Sanofi-Aventis v Eremad Pty Ltd

This matter came before Heath Wilson, acting as a delegate of the Registrar of Trade Marks, concerning an opposition by Eremad Pty Ltd (the opponent) to the registration of the trade mark OXALATIN by Sanofi-Aventis (the applicant). The dispute centred on the applicant's proposed use of OXALATIN in relation to the pharmaceutical drug OXALIPLATIN, which is also marketed by the opponent under the trade mark ELOXATIN. The opponent's opposition was based on grounds including sections 41 and 43 of the relevant Act, though only these two grounds were pressed at the hearing.

The primary legal issues before the delegate were whether the trade mark OXALATIN was capable of distinguishing the applicant's goods from those of other persons under section 41 of the Act, and whether the trade mark was deceptive or confusing under section 43. The opponent argued that the similarity between OXALATIN and the International Non-Proprietary Name (INN) OXALIPLATIN meant the mark was not inherently adapted to distinguish the applicant's goods, and that registration would be deceptive or confusing. The applicant contended that the marks were sufficiently different and that the test for distinctiveness should not be broadened to encompass the rights conferred by registration, which include protection against deceptively similar marks.

The delegate reasoned that while the applicant's trade mark was derived from the INN, the determination under section 41 must be based on the legislation and precedent, not on international policy. Applying the principles from established case law, the delegate conducted a side-by-side comparison of OXALATIN and OXALIPLATIN, noting that the differences were obvious. The delegate found that the similarities were not coincidental but concluded that a determination of deceptive similarity under section 120 of the Act was a matter for consideration under sections 44 and 60 prior to registration, and did not directly inform the section 41 analysis. The delegate ultimately found that the trade mark OXALATIN was capable of distinguishing the applicant's goods.

The delegate decided to register the trade mark OXALATIN, subject to the condition that it would only be used on goods containing the pharmaceutical OXALIPLATIN. The delegate also ordered that the applicant was entitled to an award of costs against the opponent, given the opponent's limited success on section 43 and failure on the primary section 41 argument.