Pfizer Products Inc v Karam [2006] FCA 1663

Pfizer Products Inc v Karam [2006] FCA 1663

The reputation of 'VIAGRA' is pervasive in Australia in relation to goods for sexual performance; 'HERBAGRA' is deceptively similar due to the distinctive and invented '-AGRA' suffix; use of HERBAGRA for similar goods would likely deceive or cause confusion under s 60, given VIAGRA’s reputation. The onus on the...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
01 December 2006
Procedural Posture
Intellectual Property Opposition Appeal / Appeal From Delegate of Registrar of Trade Marks – Federal Court Judgment
Outcome
Appeal allowed, registration of HERBAGRA refused, decision of Delegate reversed.
Legal Topics
['deceptive Similarity' 'reputation in Trade Marks' 'grounds of Opposition Under Trade Marks Act 1995 (cth)' 'standard of Proof in Trade Mark Opposition Appeals']
['intellectual Property' 'trade Marks'] ['deceptive Similarity' 'reputation in Trade Marks' 'grounds of Opposition Under Trade Marks Act 1995 (cth)' 'standard of Proof in Trade Mark Opposition Appeals']

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Procedural Posture

Intellectual Property Opposition Appeal / Appeal From Delegate of Registrar of Trade Marks – Federal Court Judgment

Legal Issues

  1. 1 ["Whether 'HERBAGRA' is deceptively similar to 'VIAGRA' and likely to deceive or cause confusion under ss 43, 44, 60 of Trade Marks Act 1995 (Cth)" "Whether reputation of 'VIAGRA' should be taken into account under s 44" 'What standard of proof applies in opposition proceedings under the Trade Marks Act']

Ratio Decidendi

The reputation of 'VIAGRA' is pervasive in Australia in relation to goods for sexual performance; 'HERBAGRA' is deceptively similar due to the distinctive and invented '-AGRA' suffix; use of HERBAGRA for similar goods would likely deceive or cause confusion under s 60, given VIAGRA’s reputation. The onus on the opponent is the ordinary civil standard and not a higher threshold. As a result, registration of HERBAGRA should be refused.

Court Disposition

Appeal allowed, registration of HERBAGRA refused, decision of Delegate reversed.

Orders

  • ['The appeal be allowed.' 'The decision of the Delegate of the Registrar of Trade Marks be reversed and the orders of the Delegate be set aside.' 'The application to register the trade mark be refused.' "The respondent pay the applicant's costs of this appeal and of the opposition proceedings before the Delegate of...