Sanofi v Eremad Pty Ltd
[2013] ATMO 94
•7 November 2013
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 IP, intellectual property firm, Sydney, represented the opponent. The applicant was represented by Mr Julian Cooke of Counsel, instructed by Ms Victoria Garrington of Ashurst Australia, law firm, also of Sydney.
Evidence
Evidence in Support
Statutory declaration of Sylvie Guillas, with Exhibits SG-1 to SG-20, dated 27 October 2010.
Ms Guillas is the opponent’s Trademarks Manager. She declares:
Sanofi-aventis is a global healthcare company engaged in the research development, manufacture and marketing of healthcare products. The business is diversified and includes pharmaceuticals comprising Rx (prescription) drugs, generics, consumer healthcare products, including over-the-counter pharmaceuticals, vitamins, minerals and herbal supplements; vaccines and animal health care products.
Sanofi-aventis' pharmaceuticals business focuses on six therapeutic areas: diabetes, oncology, thrombosis, cardiovascular diseases, central nervous system (CNS) and internal medicine.
One of Sanofi-aventis' flagship pharmaceutical products is Plavix, which is sold in over 115 countries, including in Australia for over 10 years….
Plavix is the proprietary name or trade mark for pharmaceutical preparations comprising the active ingredient, clopidogrel (the "Plavix Goods")…
Clopidogrel is the International Non-Proprietary Name (INN) for the chemical compound discovered by Sanofi-aventis in 1997 that inhibits platelet aggregation in the site of blood vessel damage, and so inhibits thrombosis or clot formation. It is used to reduce the risk of heart attacks, strokes and death in persons who have heart disease, have suffered a heart attack or recent stroke, or have blood circulation disease (peripheral vascular disease).
The trade mark CoPlavix is also registered worldwide by Sanofi-aventis for clopidogrel containing pharmaceutical products that are currently sold in Australia.
The trade mark Plavix has been used in Australia from at least as early as December 1998 for the Plavix Goods.
The active ingredient, clopidogrel in the Plavix Goods, was first disclosed and claimed in Australia under Australian Patent Number 554358, which was applied for on 4 February 1988.
Since 1998 the trade mark Plavix has been extensively and continuously used in Australia by Sanofi-aventis or its affiliates, Sanofi-aventis Australia Pty Ltd and SanofiSynthelabo Australia Pty Limited (previously known as Sanofi Winthrop Pty Limited) in respect of the Plavix Goods that have been manufactured and supplied to Australian patients by Sanofi-aventis or its affiliates.
The only other clopidogrel containing pharmaceutical on the Australian market at any time up until at least 8 October 2009 was the Iscover brand of clopidogrel, which was commercialised by Bristol-Myers Squibb in Australia in partnership with Sanofi-aventis.
Bristol-Myers Squibb Australia Pty Ltd and/or its related bodies corporate manufactured and supplied clopidogrel pharmaceuticals to the Australian market under licence from Sanofi-aventis…ISCOVER is a registered trade mark of Sanofi-aventis.[1]
[1] Statutory declaration of Sylvie Guillas dated 27 October 2010, Paras 6 to 17.
Ms Guillas went on to provide details of the following registered trade marks owned by the opponent[2]:
[2] Ibid, paras 12,13, Exhibits SG-3, SG-4.
| TM No. | Trade Mark | Priority Date | Class/Goods |
| 618992 | PLAVIX | 28 Jul 93 | Class 5: Pharmaceutical products |
| 764685 | 19 Dec 97 | Class 5: Pharmaceutical products | |
| 939915 | CoPlavix | 19 Jan 03 | Class 5: Pharmaceutical products |
| 1052269 (IR No. 845857) | DualPlavix | 13 Aug 04 | Class 5: Pharmaceutical preparations and substances |
| 1053371 (IR No. 846259) | DuaPlavix | 13 Aug 04 | Class 5: Pharmaceutical preparations and substances |
Evidence in Answer
Statutory declaration of Gary Waters, with Exhibits A to I, dated 29 August 2011.
Statutory declaration of Gary Waters, with Exhibits 1 to 3, Annexures J to Q, dated 10 November 2011.
Statutory declaration of Kevin Tymensen dated 11 November 2011.
Statutory declaration of Minas Lettas, with Annexures 1 and 2, dated 11 November 2011.
Statutory declaration of George Stefanos, with Annexures 1 and 2, dated 11 November 2011.
Statutory declaration of Gary Waters dated 13 February 2012.
Mr Waters is the applicant’s Managing Director. His first declaration explains the relationship between his company and the companies licensed to use the opposed trade mark CLOVIX 75 in Australia. He declares:
The Applicant is a company that has been established to own and manage intellectual property on behalf of Spirit Pharmaceuticals Pty Ltd (Spirit). The Applicant is owned and controlled by Spirit…
Spirit is an Australian pharmaceutical company that specialises in the commercialisation of prescription pharmaceuticals for the Australian retail and hospital markets.
The Applicant is the owner of Australian Trade Mark Application No. 1324817 CLOVIX 75 (the Trade Mark) in Class 5 in the name of Eremad Pty Ltd (the Application). The use of the CLOVIX 75 trade mark is licensed by the Applicant to Spirit. Spirit in turn licenses the use of the mark to Aspen Pharma Pty Ltd, the entity that distributes the product sold by reference to the CLOVIX 75 trade mark in Australia.
The Trade Mark is used by Spirit in relation to anti-platelet medicine containing clopidogrel (as besylate), and is used to prevent blood clots forming in hardened blood vessels (a process known as atherothrombosis) which can lead to events such as stroke, heart attack or death…
Spirit filed an application with the TGA on 18 September 2008 to sell the products to be sold by reference to the Trade Mark. Spirit's marketing representatives began promoting the products to be sold by reference to the Trade Mark in May 2010. The product to be sold by reference to the Trade Mark was listed on the Pharmaceutical Benefits Scheme on 1 June 2010, and sales of the product commenced as of that date…
A copy of the covering letter from the Therapeutic Goods Administration approving Spirit's use of the Trade Mark in relation to clopidogrel besylate is annexed and marked E.
Since the date of first use of the Trade Mark and March 2011, Spirit has sold approximately 182,561 units of the product bearing the Trade Mark.
I am unaware of any instances of confusion between Spirit's CLOVIX 75 product and Sanofi Aventis' PLAVIX and COPLAVIX products, despite the fact that these trade marks have been used concurrently by the parties.
Furthermore, I believe that the CLOVIX 75 and PLAVIX / COPLAVIX names are completely different.
Pharmaceutical preparations containing clopidogrel are prescription only medicines, and therefore the products sold by reference to the Trade Mark will always be prescribed by a doctor, and dispensed by a pharmacist.[3]
Evidence in Reply
Statutory declaration of Gerard James Skelly, with Exhibits GJS-1 to GJS-7, dated 12 March 2013.
[3] Statutory declaration of Gary Waters, dated 29 August 2011, paras 3-16.
Further Evidence (Applicant)
Statutory declaration of Gary Waters dated 9 August 2013.
At the commencement of the hearing, Mr Skelly put the opponent’s case against the applicant’s further evidence being allowed in.[4] He submitted that, according to the well-established tests for the admissibility of such evidence, the new declaration by Mr Waters failed on all counts, most particularly because it dealt exclusively with events that had occurred post the filing date of the application. He conceded, however, that the opponent did not consider the matter of whether the evidence was in or out to be a matter of particular significance to its own case, its protest was essentially ‘as a matter of principle’.
[4] The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. The amending Regulation has repealed regulation 5.15, which provided for the service of further evidence. However, the repealed further evidence provisions continue to apply here, because the opposition was commenced by a notice of opposition filed before 15 April 2013. (See regulation 22.9(1), Item 1.)
Mr Cooke responded that, in light of the ongoing debate in the Federal Court about events that may have occurred subsequent to the filing date of an application being relevant to a decision-maker’s ability to draw inferences about the circumstances that were in place at the actual time of filing[5], his client’s new declaration was potentially of relevance to most of the grounds of opposition being pressed by Mr Skelly.
[5] See, for example, Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 (2010) 86 IPR 437 at [74].
The principles, to which Mr Skelly referred, for deciding whether it is appropriate to allow an application for further evidence, were set out in the UK case of Oxon Italia SpA’s Application[6]. In summary, they are: that the evidence could not reasonably have been obtained earlier, that the evidence would have an important influence on the result of the case, and that it is credible. There is also the question of the public interest in allowing the evidence in, bearing in mind that fresh evidence cannot be excluded on appeal to the court. As Hearing Officer Homann observed in Studio Buying Systems Srl v Buying Systems (Aust) Pty Ltd,[7] ‘Obviously it would be preferable for the matter to be finally decided by the registrar if the admission of further evidence would allow this to be done.’
[6] [1981] FSR 408.
[7] (1991) 22 IPR 580 at 585
On balance, I have decided to allow the evidence in. I am reasonably satisfied, in terms of regulation 5.15, and according to the tests outlined above, that it is appropriate for me to do this. The new declaration clearly goes only to matters post the filing date of the application. For example, Mr Waters updates the applicant’s total sales figures under the opposed trade mark and reaffirms that even after over three years of use of CLOVIX 75, he continues to be unaware of instances of confusion between the applicant’s and the opponent’s products in the marketplace. However, given the recent and continuing judicial consideration[8] about how such post-filing evidence may inform a decision maker’s view of the state of a trade mark application at the date of filing, I am not prepared to dismiss the declaration out of hand on that score. Further, the applicant has explained that the state of negotiations between the parties prevented it from coming forward with the evidence at an earlier stage. I have no reason to doubt the veracity of the material itself. The opponent has already satisfied itself that it has no need to respond with further evidence of its own, and it has been given the appropriate opportunity to comment upon the new declaration. Finally, it would be a highly undesirable outcome from my decision on this opposition if the applicant were to feel itself compelled to appeal it merely on the basis that critical supporting evidence may have been held back from its case.
[8] See Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 and Chia Khim Lee Food Industries Pte Ltd v Red Bull GmbH (No 1) [2012] FCA 1184.
Onus and Grounds of Opposition
The onus is upon an opponent to establish one or more grounds of opposition, according to the balance of probabilities.[9]
[9] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32]; Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12].
Prior to the hearing, the opponent indicated that the grounds of opposition it wished to press were those under sections 42(b), 44, 59, 60 and 62A. At the commencement of the hearing, Mr Skelly withdrew his written submissions in relation to section 42(b), indicating that the opponent did not wish to press this ground after all. The remaining four grounds, under sections 44, 59, 60 and 62A, were debated at considerable length during the course of the hearing. However, an opponent’s success in relation to a single ground of opposition usually renders unnecessary any further consideration of other grounds pressed, although all grounds of opposition are available to an opponent in the event of an appeal from a delegate’s decision. For reasons that will soon become apparent, I will confine my deliberations to the ground of opposition under section 60.
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The provisions of section 60 read:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
To satisfy section 60, the opponent must demonstrate that, at the time of filing the opposed application (8 October 2009), there existed a reputation in another trade mark, such that use of the opposed trade mark for the goods covered by the application would likely cause prospective customers to be deceived or confused. The trade mark relied upon need not be subject of an application or registration in order to be relevant in terms of this section. Section 60 does not require the trade mark relied upon to be ‘deceptively similar’[10] to the opposed trade mark or that it has been used on similar goods. Instead, the focus of the provision is squarely upon the deception or confusion likely to be generated by the applicant’s proposed use of its trade mark in the face of the reputation of the trade mark relied upon by an opponent.
[10] As defined in section 10 of the Act.
Submissions
Mr Skelly quoted extensively from the reasoning of Gyles J in Pfizer Products Inc v Karam[11] in his submissions under section 60. Firstly, though, he argued:
[11] (2006) 70 IPR 599.
In McCormick & Co Inc v. McCormick [2000] FCA 1335 at paragraph 81, Kenny J discussed the meaning to be attributed to the word “reputation” in Section 60. Reputation refers to the recognition by the public generally of the Opponent’s trade mark. In McCormick it was permissible to infer reputation from the high volume of sales and advertising expenditure.
Kenny J in McCormick & Co Inc v. McCormick, at paragraph 85, cited with approval the following observation by Hearing Officer Thompson in Hugo Boss AG v. Jackson International Trading Company 47 IPR 423, 436:
The reputation of a trade mark derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other traders’ marks with which the owner of the trade mark in question chooses to associate the trade mark via sponsorships, cross-promotions, ‘contra deals’ and so forth.
Dodds-Streeton J in Tivo Inc v Vivo International Corporation Pty Ltd [2012] (19 March 2012) approved this formulation and amplified it in the context of spill over reputation from indirect exposure to the TiVo trade mark.
Having regard to the substantial reputation of the Opponent’s PLAVIX trade mark (as discussed below), use of the opposed mark, as at the relevant date for the same pharmaceutical would be likely to at least cause confusion.
It is necessary to evaluate this having regard to a fair and notional use of the opposed mark. Again, it is what the [applicant] can do if registration is allowed and not just a consideration of its manner of use of the opposed trade mark since the relevant date.
The Pfizer v. Karam case is also authority for the proposition that, in the context of Section 60, the reputation of the Opponent’s mark is relevant for the purpose of comparing it with the applied for mark. That case was, of course, decided in the context of s60 when there was an additional requirement for a finding of deceptive similarity.
The Australian reputation of the Opponent’s Plavix trade mark as at the relevant date is clearly established in the Guillas Declaration.
Plavix was one of the Opponent’s flagship pharmaceutical products marketed in many countries throughout the world. This pharmaceutical brand has been continuously used in Australia since December 1998 for clopidogrel pharmaceuticals.
As at the relevant date, the Opponent’s Plavix and Iscover brands were the only brands in the Australian market for clopidogrel pharmaceuticals by virtue of the Opponent’s patent which, at the relevant date, had not been revoked by the Commissioner (as further discussed under the contrary to law ground of opposition below).
The sales figures disclosed in Confidential Exhibit SG-10 are substantial.
The marketing of the Opponent’s Plavix clopidogrel pharmaceutical to the medical profession from 1998 up to the relevant date was substantial as reflected in paragraphs 32 -36 of the Guillas Declaration.
Clearly, the Opponent has established a substantial Australian reputation in its Plavix clopidogrel pharmaceutical as at the relevant date.
The Opponent submits that, as a result of this reputation, use of the opposed CLOVIX 75 trade mark would be likely to at least cause confusion, in the sense of wonderment, as to the source of the Applicant’s identical pharmaceutical.
This confusion is attributable to the strong and exclusive positioning in the market of the Opponent’s Plavix clopidogrel pharmaceutical as at the relevant date and the Applicant taking the strong suffix – VIX and combining it with the prefix CLO- which, at least to the medical profession in the context of the applied for goods, would be readily perceived as derived from clopidogrel.
The Applicant has intentionally adopted a strategy of, not just marketing a generic product under the INN clopidogrel, but has adopted a branding strategy to do this and the chosen brand is clearly intended to get as close as possible to the Opponent as market leader. Mr Waters’ silence as to the selection of a brand with the suffix – VIX is telling. Any inconvenience suffered by the Applicant if it is required to re-brand (third Waters Declaration) is the result of its own doing.
Many originator pharmaceutical manufacturers also have equivalent generic products and medical practitioners may still be caused to wonder whether the CLOVIX 75 clopidogrel product comes from the same source as the Plavix clopidogrel product.
The Applicant’s evidence is directed to activity after the relevant date.
The two pharmacists asked to express an opinion on confusion are from the same pharmacy and are hardly a representative sample. They have no bearing on circumstances which may arise is a hospital environment and the applicant’s specification of goods extends to pharmaceuticals containing clopidogrel in a hospital setting. The type of confusion in issue is not characterised and significantly, the opinions given relate to a state of affairs after the relevant date…
The likelihood of confusion is readily apparent from the degree of similarity between the respective trade marks and the identical nature of the goods, bearing in mind the notional use which must be attributed to the opposed trade mark.
The Section 60 ground of opposition has been established. The Opponent has satisfied its onus and the Applicant has not tendered any evidence sufficient to rebut the likelihood of confusion at the relevant date.
Mr Cooke responded in the following terms:
It its written outline of submissions, Sanofi relies on the alleged reputation in the PLAVIX trade mark for the purpose of s 60.
In order to succeed in this ground of opposition, Sanofi will need to establish that: the PLAVIX trade mark had, before 8 October 2009, in respect of pharmaceutical preparations being products containing clopidogrel, acquired a reputation in Australia; and because of the reputation of that trade mark, the use of CLOVIX 75 would be likely to deceive or cause confusion.
It is not in dispute that PLAVIX had acquired a reputation in Australia before 8 October 2009 as the originator brand of pharmaceutical containing clopidogrel. It is in dispute that because of that reputation, that the use of CLOVIX 75 would be likely to deceive or cause confusion. Eremad submits that the use of CLOVIX 75 as at the priority date would not have been likely to deceive or cause confusion for the reasons discussed below.
First, CLOVIX 75 is not deceptively similar to PLAVIX, because:
§ the signs commence with different letters;
§ the signs have different prefixes (ie CLO –v-PLA);
§ the presence of 75 in CLOVIX 75;
§ nothing turns on the common use of the suffix “VIX”. Suffixes are commonly given less primacy both visually and aurally than prefixes. The suffix “VIX” is not an uncommon suffix for trade marks for pharmaceuticals…
Secondly, the relevant market, namely medical practitioners and pharmacists, pay particular care to distinguishing names of prescription pharmaceuticals and, therefore, would be unlikely to be deceived or confused. The names of prescription pharmaceuticals (even if those names are similar which is not the case here) are unlikely to be confused by the relevant market, namely, medical practitioners and pharmacists. On this issue, Eremad has adduced the evidence of Messrs Stefanos and Lettas who are both pharmacists…
Thirdly, the reputation in PLAVIX was as an originator drug whereas CLOVIX 75 could only be used as a generic substitute to PLAVIX…the databases used by pharmacists distinguish between the (higher priced) originator pharmaceutical and the (lower priced) generic substitutes…
Mr Waters, Managing Director of Eremad, also gives evidence about how generic pharmaceuticals such as CLOVIX 75 are selected and dispensed by pharmacists. Unless the medical practitioner has ticked the “no substitution” box on the prescription then the patient is asked by the pharmacist whether they would be happy to have a (cheaper) generic medicine. The brand selection of the generic will be primarily left with the pharmacist. Pharmacists typically use databases to assist them. That will distinguish the (more expensive) originator pharmaceutical from the (cheaper) generic brands which are substitutable for the originator pharmaceutical. That is, the database will distinguish between PLAVIX or CoPlavix (being originator pharmaceuticals) from substitutable generic pharmaceuticals such as CLOVIX 75, PIAX, CLOPIDOGREL SANDOZ etc.
Mr Tymensen, Marketing Manager of Aspen Pharma Pty Ltd, gives evidence that Aspen markets CLOVIX 75 directly to pharmacists. The marketing campaign distinguishes between the originator pharmaceutical brand (ie PLAVIX) and the generic brand (ie CLOVIX 75)…
Fourthly, a strong inference that the use of CLOVIX 75 as at the priority date would not have been likely to deceive or cause confusion within the meaning of s 60 can be drawn from the absence of any evidence of confusion between CLOVIX 75 and PLAVIX during the extensive period that those marks have coexisted…
In the circumstances, for the reasons discussed above, it is submitted that Sanofi has not established the ground of opposition under s 60.
Discussion
There are compelling aspects to the arguments of both parties to this opposition. Mr Skelly has argued that the findings under section 60 in relation to HERBAGRA and VIAGRA branded goods in Pfizer Products Inc v Karam[12] are precisely on all fours with the present case. In fact, when Gyles J made that decision, the provisions of section 60 were actually more prescriptive, requiring as a threshold test that the trade marks in dispute be deceptively similar.[13] However, in the applicant’s favour, the relevant product in the Pfizer v. Karam case was a herbal medicine, not a pharmaceutical preparation containing a substance available only on prescription. The applicant has argued strongly that the customers for both its CLOVIX 75, and the opponent’s PLAVIX products, are exclusively highly trained, computer-assisted professionals, medical practitioners and pharmacists, apparently very far removed from the ‘men of all ages and from all walks of life’[14] likely to comprise the market for both VIAGRA and HERBAGRA branded goods.
[12] op cit (footnote 11).
[13] The presently opposed trade mark application was filed after a significant amendment to section 60, removing the requirement for deceptive similarity, came into force on 23 October 2006. Accordingly, the post amendment version of the section applies to this opposition.
[13] As defined in section 10 of the Act.
[14] Pfizer Products Inc v Karam, op. cit., at [40]
The reputation of a trade mark may develop in a variety of ways, and be influenced by the particular trading environment in which it has evolved.[15] However, ‘in practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the [trade] mark, as opposed to the product.’[16] I have noted above Mr Cooke’s concession on behalf of the applicant that, at the time the opposed trade mark was filed, the PLAVIX trade mark had a reputation in Australia. Given the very high volume of sales and substantial advertising figures evidenced by the opponent, it would be hard for anyone to argue otherwise. The first requirement of section 60 is satisfied.
[15] McCormick & Co Inc v Mary McCormick (2000) 51 IPR 102 per Kenny J at [85].
[16] McCormick & Co Inc v Mary McCormick, op. cit. at [86].
The determining issue for my consideration here is whether, because of the reputation of the PLAVIX trade mark, use of the CLOVIX 75 trade mark would be likely to deceive or cause confusion amongst customers of both. In Pfizer v. Karam, Gyles J observed:
Overall it was submitted on behalf of Karam that, when the nature of the relevant consumer was considered, as well as their likely knowledge and familiarity with VIAGRA and the significant visual differences between the two marks, there would be no reasonable likelihood of a substantial number of members of the relevant class of consumers being confused in the relevant sense. It was submitted that to refuse the application as a result of the use of the suffix ‘-AGRA’ would be to give a practical monopoly to the applicant of all words conveying the same idea by the use of that suffix. Conveying the same idea is not sufficient to create a deceptive resemblance (Cooper Engineering at 538–539).
In my opinion, these submissions under-estimate the impact of the aural similarity between the words by virtue of the suffix ‘-AGRA’. It forms a clear link between the marks which is not explained in any way as ‘AGRA’ has no relevant meaning. To see invented words such as this is to invite attention to the sound as well as the sight, even if the sound is, as it were, heard silently. In any event, the sound is used in discussion about the product for sale, ordering the product for sale, and so on. (Berlei Hestia Industries Limited v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362.)
I do not agree that the fame of VIAGRA would help to distinguish the marks. It would rather cause HERBAGRA to strike a chord with the consumer as to a link with VIAGRA. The deception or confusion need not persist until the point of purchase (Hack, Re Application to Register a Trade Mark (1940) 58 RPC 91 at 103–104; Southern Cross Refrigerating Co per Kitto J at 595–596; Campomar Sociedad Limitada and Another v Nike International Limited and Another [2000] HCA 12; (1999) 202 CLR 45 at [83])…
The complaint about granting a monopoly of the word ‘AGRA’ is of little substance. It is an invented word with no meaning in this context. To suggest that it conjures up the name of an Indian city or the famous waterfalls at Niagara, or that it has some connotation in agri business is irrelevant. It is not descriptive in any relevant sense…
Two points should be made. First, the question arising in relation to misleading or deceptive conduct contrary to s 52 or passing off is different from that arising under s 60. Secondly, the application of a well known trade mark to quite dissimilar goods is a very different question to that which arises here. It may be that some of the more sophisticated members of the public with marketing experience would understand that it is either likely or possible that a local entrepreneur was endeavouring to appropriate for itself and trade off part of VIAGRA’s reputation. Lehane J referred to a number of those authorities in McIlhenny at (1997) 149 ALR 504–505; (1997) 39 IPR 195–196. In my opinion, such persons would not be representative of the public at large.
Applying the principles laid down in the High Court cases, such as Australian Woollen Mills Limited v F S Walton and Company Limited [1937] HCA 51; (1937) 58 CLR 641; Cooper Engineering; The Shell Company of Australia Limited v Esso Standard Oil (Australia) Limited [1963] HCA 66; (1963) 109 CLR 407 and Southern Cross Refrigerating Company that remain applicable under the 1995 Act provided that onus is borne in mind (cf Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 at [39]–[42]), I am satisfied that the trade mark HERBAGRA in respect of the particular goods in question would be deceptively similar to the trade mark VIAGRA, which had acquired a reputation in Australia prior to the application for HERBAGRA, and that because of the reputation of VIAGRA the use of HERBAGRA would be likely to deceive or cause confusion.[17]
[17] Pfizer Products Inc v Karam, op cit. [40] to [47]
Here, despite Mr Cooke’s extensive submissions about the ‘very, very sophisticated market’ for his client’s products, and the supposedly manifest differences between the trade marks at issue, I am persuaded by the opponent’s arguments that, as with the ‘AGRA’ suffix in VIAGRA and HERBAGRA, the unusual and distinctive ‘VIX’ suffix in the CLOVIX 75 trade mark, taken in the context of the longstanding reputation of the PLAVIX trade mark, will likely lead many consumers to be caused to wonder whether what are effectively identical goods so marked in fact originate from the same source. While I have noted Mr Cooke’s claims that the number 75 adds an important distinguishing characteristic to the opposed trade mark, and that the suffix ‘VIX’ is ‘not an uncommon suffix for pharmaceuticals’, I am not persuaded of the merit of either of these arguments. All consumers of pharmaceuticals are familiar with such numbers being used merely to indicate the number of milligrams of the active ingredient in the product. They are unlikely to see the number 75 as having trade mark significance at all. Indeed, as Mr Skelly pointed out, the applicant’s own evidence shows that, in use, the opposed trade mark is presented as ‘CLOVIXTM75’[18]. Further, the opponent’s evidence has contradicted the applicant’s claim to the ‘not uncommon’ nature of the suffix ‘VIX’ used in relation to pharmaceuticals, by demonstrating that, of the small number of examples to be found on the Trade Marks Register (17) and on the Australian Register of Therapeutic Goods (12), the great majority belong to the opponent[19].
[18] Statutory declaration of Gary Waters dated 11 November 2011, Exhibit 3.
[19] Statutory declaration of Gerard James Skelly dated 12 March 2013, Exhibits GJS-6 and GJS-7.
The applicant’s claim that, at the initial point of prescription and dispensing, the trade marks and products of both opponent and applicant might be more easily differentiated by trained professionals, may well be true. However, as the opponent’s evidence has shown, those professionals themselves are far from infallible[20] and the end users are of course far less sophisticated. Patients may be for the most part receptive to guidance from their health professionals but, as Mr Cooke mentioned only briefly in his submissions, the majority of these customers are still given the option by pharmacists to choose for themselves whether they will be dispensed ‘originator drugs’ or ‘generic substitutes’. Having become aware of the existence of CLOVIX 75, they might specifically request that generic drug from the chemist, in the mistaken belief that it originated from the same source as the PLAVIX medication they were accustomed to.
[20] Persuasively in support of this argument, Mr Skelly quoted many passages from the ‘National Medication Safety and Quality Scoping Study – Committee Report 21 April 2009, also from his statutory declaration dated 12 March 2013, Exhibit GJS-1. Exhibits GJS-2 to GJS-5 were also relevant.
Notwithstanding Mr Waters’ recent declaration[21] that he personally has not encountered instances of confusion in the marketplace over the past three years, I am satisfied that, at the time the opposed application was filed, there was a real, tangible danger of a significant number of busy health care professionals as well as patients being deceived and confused. Faced with the applicant’s trade mark in use on a generic substitute pharmaceutical, many of both categories of users, previously familiar with the opponent’s well-established, long-used trade mark for the originator drug, would very likely be caused to wonder whether their common factor, the visually and aurally memorable suffix ‘VIX’, indicated a connection of some kind between the two.
[21] Statutory declaration of Gary Waters dated 9 August 2013, para 5.
Both requirements of section 60 have been met, and the opponent has succeeded under this ground.
Decision
Section 55(1) of the Act provides:
(1) Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
I find here that the opponent has met the onus upon it and has established its ground of opposition argued under section 60. I therefore refuse to register trade mark number 1324817.
Costs
The opponent has requested its costs. It is usual for costs to follow the event, and the opponent has succeeded in one of its grounds of opposition. I award costs, according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995, against the trade mark applicant, Eremad Pty Ltd.
Claudia Murray
Hearing Officer
Trade Marks Hearings
7 November 2013
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