Merial v Virbac S A - [2012] NZHC 3392

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2012-485-1388 [2012] NZHC 3392

UNDER the Trade Marks Act 2002

IN THE MATTER OF an appeal from the decision of the Assistant
Commissioner of Trade Marks dated 11
June 2012 [2012] NZIPOTM 16

BETWEEN MERIAL Appellant

ANDVIRBAC S A Respondent

Hearing: 14 November 2012

Counsel: S A Fogarty and J D Miles for the Appellant
D Marriott for the Respondent

Judgment: 13 December 2012

JUDGMENT OF ELLIS J

This judgment was delivered by me on 13 December 2012 at 4 pm, pursuant to r 11.5 of the High Court Rules

Registrar/Deputy Registrar

Solicitors: A J Park, PO Box 565, Auckland
Counsel: D L Marriott, PO Box 5844, Auckland 1141

MERIAL V VIRBAC S A HC AK CIV-2012-485-1388 [13 December 2012]

[1] Merial has filed an appeal from a decision of Assistant Commissioner of Trade Marks, J Walden, 16 delivered on 11 June.1 The decision relates to an application by Virbac SA (Virbac) for registration of the trademark Fiproline that is opposed by Merial. Merial is the holder of the trademark Firstline. Both Fiproline and Firstline are anti-parasitic preparations used, in particular, to externally treat flea and tick problems in cats and dogs. It is of some relevance that the active ingredient
in Firstline is known as fipronil.

[2] In the course of her decision the Assistant Commissioner ruled that certain of the evidence filed by Merial in reply to evidence filed by Virbac was inadmissible. The principal ground for that ruling was that the evidence was not “strictly in reply” as required by Regulation 85 of the Trade Marks Regulations 2003.2

[3] This interlocutory judgment relates to:

(a) The correctness of that ruling; and

(b)An alternative application made by Merial for leave to adduce the putative evidence in reply as fresh evidence in the appeal under High Court Rule 20.16 or pursuant to its inherent jurisdiction.

Background

[4] The procedure for a trade mark opposition is prescribed in the Trade Marks

Regulations 2003. The relevant steps are the filing of:3
(a) A notice of opposition; (b) A counter-statement;

1 2012 [2012] NZIPOTM.
2 Regulation 85 provides:

An opponent to an application for registration may, if the applicant has filed evidence, file evidence strictly in reply within 1 month after the opponent has received a copy of the applicant's evidence.

3 Trade Marks Regulations 2005, Part 8.

(c) The opponent’s evidence; (d) The applicant’s evidence;
(e) Any further evidence by the opponent which, as I have said, is required to be “strictly in reply”.

[5] It is well established that the onus in such an application lies on the applicant to establish that the use of the opposed mark is unlikely, or will not cause exceptional confusion in terms of s 17(1)(a) of the Trade Marks Act 2002 (the TMA). It is equally well established, however, that there is a preliminary or threshold evidential burden on an opponent to establish that it possesses a reputation in the relevant market. The reason for…

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.

Continue reading Merial v Virbac S A

Details

AGLC: Merial v Virbac S A [2012] NZHC 3392
Case: [2012] NZHC 3392
Decision Date: 13 December 2012

CaseChat Overview and Summary

In the High Court of New Zealand, Merial, the holder of the trademark "Firstline," appealed against the Assistant Commissioner of Trade Marks' decision to exclude certain evidence in opposition to Virbac SA's application to register the trademark "Fiproline." Both trademarks are used for anti-parasitic preparations for pets. The Assistant Commissioner had ruled that certain of Merial's evidence in reply to Virbac's evidence was inadmissible as it was not "strictly in reply" as required by Regulation 85 of the Trade Marks Regulations 2003. This interlocutory judgment focused on the correctness of that ruling and an alternative application made by Merial for leave to adduce the excluded evidence in the appeal under High Court Rule 20.16 or pursuant to the inherent jurisdiction.

The court found that the Assistant Commissioner was correct in concluding that the excluded evidence was not admissible as it was not strictly in reply to Virbac's evidence. The court held that the dominant purpose for adducing the evidence in reply was to support the original notice of opposition, not to respond directly to something said in evidence from the applicant. Allowing such a course would create the opportunity for opponents in trade mark matters to "game" the system, by keeping their forensic powder dry until after an applicant has fired its best (and only) evidential shot. This would be fundamentally unfair to allow an opponent to have such a new and substantive "last word," without the applicant having the opportunity to answer it.

As for the alternative application, the court found it to be illogical. The Assistant Commissioner had refused to consider the evidence concerned because she regarded it as inadmissible. Upholding that finding, the court held that admitting the evidence on appeal on the grounds that it was "fresh" and cogent in terms of rule 20.16 would mean that the appeal was heard and determined on a basis that had been expressly eschewed by the Assistant Commissioner for reasons that the court found to be correct. Therefore, Merial's appeal and alternative application were dismissed, and costs were reserved.

Orders