Merial v Virbac SA - [2013] NZHC 2773

IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2012-485-1388 [2013] NZHC 2773

BETWEEN MERIAL Appellant

ANDVIRBAC SA Respondent

Hearing: 6 June 2013

Appearances: K McLeod and J D Miles for the Appellant
D Marriott and H Cumming for the Respondent

Judgment: 22 October 2013

JUDGMENT OF MALLON J

Introduction

[1] The appellant (“Merial”) sells products for the prevention of fleas and ticks in cats and dogs under the registered trademark FRONTLINE. A competing product in overseas markets is sold under the trademark FIPROLINE. Both the FRONTLINE and FIPROLINE products contain the active ingredient fipronil. The respondent (“Virbac”) applied to register the trademark FIPROLINE in New Zealand. Merial unsuccessfully opposed Virbac’s application.1 It now appeals from the Assistant
Commissioner’s decision which allowed Virbac’s registration of FIPROLINE.2

[2] Although the opposition relied on wider grounds, the parties are agreed that

Merial’s opposition stands or falls on s 17 of the Trade Marks Act 2002. There are

two issues on this appeal:

1 Virbac S A v Merial [2012] NZIPOTM 16.
2 The approach on appeal is that set out in Austin, Nichols & Co Inc v Stichting Lodestar [2007] NZSC 103, [2008] 2 NZLR 141 at [3] and [5]: the High Court is to come to its own view on the merits with the weight given to the decision of the Assistant Commissioner being a matter of judgement.

MERIAL v VIRBAC SA [2013] NZHC 2773 [22 October 2013]

(a) whether the Assistant Commissioner erred in permitting registration of FIPROLINE where the specification is not confined to products containing fipronil;

(b)whether the Assistant Commissioner erred in finding that use of the FIPROLINE mark was not liable to confuse or deceive the relevant market in relation to FRONTLINE.

The background

[3] Merial is an animal healthcare company. It operates in more than 150 countries, including New Zealand. Its customers include veterinarians (“vets”), pet owners, farmers and food animal producers. It has a range of products for the heath, well-being and performance of animals. Those products include FRONTLINE.

[4] FRONTLINE was first launched in 1994. It has significant worldwide sales, for example exceeding US$980,000,000 in 2009 and US$866,000,000 for the period January to September in 2010. In New Zealand Merial sells two FRONTLINE products: FRONTLINE PLUS (New Zealand’s number one flea and tick treatment) and FRONTLINE Spray. Estimated sales of FRONTLINE products in New Zealand exceeded $5 million per year between 2006 and 2010. The products are advertised via television, radio, print media and point of sale promotional materials.

[5] Merial has a large number of registrations around the world with the word

FRONTLINE. In New Zealand it has four registrations: FRONTLINE (10 June

1994); FRONTLINE PLUS (24 July 2002); FRONTLINE ORIGINAL (31 March

2010); and FRONTLINE REGULAR (31 March 2010). All of these registrations are in class 5 for “[p]roducts for veterinary use including anthelmintics, insecticides and anti-parasitic agents” or “[v]eterinary preparations, including insecticides and anti- parasitic preparations”.

[6] In New Zealand FRONTLINE is sold exclusively through veterinary clinics or vet-associated companies.…

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 SA

Details

AGLC: Merial v Virbac SA [2013] NZHC 2773
Case: [2013] NZHC 2773
Decision Date: 22 October 2013

CaseChat Overview and Summary

Merial, an animal healthcare company, appeals against the decision of the Assistant Commissioner of the New Zealand Intellectual Property Office to allow Virbac to register the trademark FIPROLINE for veterinary preparations, particularly an anti-parasitic preparation for external use. The primary issues are whether the Assistant Commissioner erred in permitting the registration where the specification is not confined to products containing fipronil, and whether the Assistant Commissioner erred in finding that the use of the FIPROLINE mark was not likely to confuse or deceive the relevant market in relation to Merial's trademark FRONTLINE.

The court found that the Assistant Commissioner erred in her assessment of the likelihood of confusion between FIPROLINE and fipronil, the active ingredient in Merial's FRONTLINE products. The court held that the marks FIPROLINE and fipronil are visually, aurally, and conceptually similar, and thus likely to cause confusion amongst a substantial number of persons in the relevant market. The court also found that the Assistant Commissioner erred in concluding that the marks FRONTLINE and FIPROLINE were not sufficiently similar to cause confusion. The visual and aural similarities between the marks, coupled with the awareness of fipronil as an active ingredient in flea treatments, create a likelihood of confusion amongst a substantial number of persons in the relevant market.

The appeal was allowed, and the trade mark registration 821899 FIPROLINE was removed from the register. Costs were awarded to Merial, and the matter was categorised as 2B.

Orders