Sanofi v Eremad Pty Ltd - [2013] ATMO 94

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Sanofi to registration of trade mark application 1324817(5) - CLOVIX 75 - filed in the name of Eremad Pty Ltd.

Delegate:

Claudia Murray

Representation:

Opponent: Mr Gerard Skelly of Shelston IP, intellectual property firm, Sydney.

Applicant: Mr Julian Cooke of Counsel, instructed by Ms Victoria Garrington of Ashurst Australia, law firm, Sydney.

Decision:

2013 ATMO 94

Section 52 opposition – section 60 ground established – because of reputation of opponent’s trade mark, use of applicant’s trade mark likely to deceive or cause confusion - registration refused – costs awarded against applicant.

Background

Trade mark application number 1324817 was filed by Eremad Pty Ltd, an Australian company, (‘the applicant’) on 8 October 2009, for the plain word trade mark:

CLOVIX 75

The application now covers the following goods in class 5 of the Nice Classification of Goods and Services:
Pharmaceutical preparations being products containing clopidogrel.
No grounds for rejection under the Trade Marks Act 1995 (‘the Act’) were raised against the application during examination, which was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 11 February 2010.
Sanofi-aventis, a French company, (which later changed its name to Sanofi on 27 April 2012) (‘the opponent’) filed notice of opposition to registration on 12 February 2010. Fifteen grounds of opposition were listed in the notice.
Evidence in support, answer and reply was duly served and filed. However, on 26 October 2011, during the course of filing its evidence in answer, the applicant requested that its statement of goods be significantly restricted to the statement quoted above. Previously, the application had been accepted for possible registration with the following statement of goods:
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides, herbicides.
On 27 and 28 March 2013, respectively, the applicant and opponent requested a hearing on the opposition. Then, almost on the eve of the hearing, on 9 August 2013, the applicant sought permission to serve and file further evidence, in the form of a new declaration by Mr Waters, ‘clarifying and updating’ the information provided in his earlier declarations. The explanation provided for this information not having been filed earlier was that, between July 2012 and March 2013 (just prior to when both parties requested to be heard), the applicant and opponent had been engaged in a ‘lengthy period of settlement negotiations’.
I heard the opposition, as a delegate of the Registrar of Trade Marks, on 16 August 2013 in Sydney. As had been agreed between the parties earlier, I took submissions from both sides at the hearing on the question of whether the applicant’s further evidence should be allowed in. I undertook to address this matter in the course of my written decision with reasons, and I will do this shortly.
Mr Gerard Skelly of Shelston…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2013] ATMO 94
Decision Date: 7 November 2013

CaseChat Overview and Summary

Sanofi Pty Ltd (Sanofi) sought interlocutory relief against Eremad Pty Ltd (Eremad) in the Federal Court of Australia. The dispute concerned allegations of misleading and deceptive conduct in contravention of the *Australian Consumer Law* (ACL), specifically in relation to the marketing and sale of a pharmaceutical product. Sanofi contended that Eremad had engaged in conduct that was likely to mislead consumers about the efficacy and nature of its product, thereby impacting Sanofi's own market position.

The primary legal issue before the Court was whether Eremad's conduct constituted misleading or deceptive conduct under section 18 of the ACL. This required the Court to assess whether Eremad's representations, viewed objectively from the perspective of the relevant class of consumers, were likely to mislead or deceive. A secondary issue concerned the appropriate form of interlocutory relief, should the Court find a serious question to be tried regarding the alleged contraventions.

Justice Murray considered the evidence presented by both parties, including marketing materials and expert opinions. Her Honour applied the established principles for assessing misleading or deceptive conduct, focusing on the overall impression created by Eremad's representations. The Court found that there was a serious question to be tried as to whether Eremad's conduct was likely to mislead consumers regarding the benefits and intended use of its product. Consequently, the Court determined that interlocutory relief was warranted to preserve the status quo pending a final determination of the proceedings.

The Court ordered that Eremad be restrained from continuing the conduct complained of, pending the final resolution of the proceeding.

Orders