Sanofi-Aventis v Eremad Pty Ltd

Sanofi-Aventis Pty Ltd (the Opponent) opposed the registration of two trade mark applications by Eremad Pty Ltd (the Applicant), namely application numbers 1187840 and 1187843, for the marks OXALITAN RTU and OXALITAN respectively. The dispute concerned the registrability of these marks, with the Opponent arguing they were not capable of distinguishing the Applicant's goods, were deceptively similar to an existing registered trade mark, and that one application was made in bad faith. The proceedings were heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the proposed trade marks were capable of distinguishing the Applicant's goods from those of other traders under section 41 of the *Trade Marks Act 1995* (Cth), whether the mark OXALITAN RTU was deceptively similar to the Opponent's registered mark ELOXATIN under section 44, and whether application 1187843 was filed in bad faith under section 62A. The Opponent bore the onus of establishing these grounds on the balance of probabilities.

The delegate reasoned that OXALIPLATIN, the International Non-Proprietary Name for a cancer drug, was a key factor in assessing the grounds. Regarding section 41, the delegate considered whether the marks were inherently adapted to distinguish the Applicant's goods, noting that if a mark has not been used, the inquiry focuses on whether other traders would likely desire to use the same or similar marks in the ordinary course of business. The delegate found that the Opponent had not established its ground of opposition under section 44. Ultimately, the delegate refused to register application 1187843, but allowed application 1187840 to proceed to registration, subject to any appeal. No award of costs was made.