Virbac S A v Merial - [2014] NZCA 619

IN THE COURT OF APPEAL OF NEW ZEALAND

CA805/2013
[2014] NZCA 619

BETWEEN	VIRBAC S A Appellant
AND	MERIAL Respondent

Hearing:	14 October 2014
Court:	Wild, Miller and MacKenzie JJ
Counsel:	D L Marriott for Appellant K W McLeod for Respondent
Judgment:	17 December 2014 at 10.30 am

JUDGMENT OF THE COURT

AThe appeal is allowed in part. We direct that FIPROLINE be registered, but only in respect of goods containing the active ingredient fipronil.
BThe cross-appeal is dismissed.
CThe appellant will have costs for a standard appeal on a band A basis, and costs of $1,500 on the cross-appeal, with usual disbursements of both.

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REASONS OF THE COURT

(Given by Miller J)

Introduction

Virbac S A and Merial are French companies which make and sell veterinary pharmaceutical products on a very large scale.[1]
[1]Both are among the eight largest firms in their field.
Merial sells flea treatment products under the trade mark FRONTLINE in more than 150 countries, including New Zealand. It or its predecessor firms have done so since 1994. FRONTLINE is said to be the world’s largest selling flea treatment for dogs and cats. It contains fipronil, which kills adult fleas and is used in many insecticides, and methoprene, which kills flea eggs and larvae.
Virbac also sells flea treatments in which fipronil is the active ingredient. It began selling its products internationally in 2008 or 2009 under the mark FIPROLINE, with significant success.[2] It now wishes to introduce FIPROLINE-branded products to the New Zealand market.
[2]The parties disagree on the date, but nothing turns on it.
On 1 April 2010 Virbac applied to register FIPROLINE in New Zealand. The Assistant Commissioner of Trade Marks, J Walden, authorised registration against Merial’s opposition.[3] An appeal succeeded before Mallon J, who found for purposes of s 17(1)(a) of the Trade Marks Act 2002 that in use FIPROLINE would deceive or confuse consumers by causing them to wonder whether products associated with it were those of Merial, and further that FIPROLINE would also confuse or deceive if used for products that do not contain fipronil.[4]
[3]Virbac S A v Merial [2012] NZIPOTM 16.
[4]Merial v Virbac S A [2013] NZHC 2773.
The questions in Virbac’s further appeal are whether use of the FIPROLINE mark is likely to deceive or cause confusion, first, in relation to the FRONTLINE mark, and second, if used for goods that do not contain fipronil. There is a
cross-appeal; Merial claims that Virbac is deemed to have admitted through its pleadings that FIPROLINE would indeed deceive or confuse if used for goods that do not contain fipronil.

The marks and their existing uses

Merial has registered four relevant New Zealand trade marks; they are FRONTLINE, FRONTLINE PLUS, FRONTLINE ORIGINAL and FRONTLINE REGULAR. Counsel drew no distinction among the marks, and we will refer to them collectively as the FRONTLINE mark. All are word marks registered in Class 5 for veterinary preparations including insecticides and anti-parasitic preparations.
The parties agree that FRONTLINE enjoys…

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 Virbac S A v Merial

Details

AGLC: Virbac S A v Merial [2014] NZCA 619
Case: [2014] NZCA 619
Decision Date: 17 December 2014 at 10.30 am

CaseChat Overview and Summary

Virbac S A and Merial, both French companies engaged in the large-scale production and sale of veterinary pharmaceutical products, were involved in a dispute regarding the registration of the trade mark FIPROLINE in New Zealand. Merial opposed Virbac's application to register the mark on the grounds that it would cause confusion and deception among consumers, particularly in relation to its existing FRONTLINE mark. Virbac argued that the marks were dissimilar and would not cause confusion.

The Court of Appeal was tasked with determining whether the use of the FIPROLINE mark would be likely to deceive or confuse consumers in relation to the FRONTLINE mark, and whether registration should be limited to goods containing the active ingredient fipronil. Additionally, Merial cross-appealed, arguing that Virbac had admitted through its pleadings that FIPROLINE would cause confusion if used for goods that do not contain fipronil.

The Court found that the marks were dissimilar, and that use of the FIPROLINE mark was not likely to deceive or cause confusion vis-à-vis the FRONTLINE mark. However, the Court agreed with Merial that the FIPROLINE mark was likely to cause confusion if used in connection with products that do not contain fipronil. Consequently, the Court allowed the appeal in part and directed that the FIPROLINE mark be registered, but only in respect of goods containing the active ingredient fipronil. The cross-appeal was dismissed.

In conclusion, the appeal was allowed in part, and the registration of the FIPROLINE mark was directed, but only for goods containing the active ingredient fipronil. The cross-appeal was dismissed, and Virbac was awarded costs for the appeal and cross-appeal.

Orders