Pfizer (Viagra) successfully appeals in the Federal Court to oppose Karam’s Herbagra mark
Pfizer Products Inc v Karam [2006] FCA 1663 - http://www.austlii.edu.au/au/cases/cth/federal_ct/2006/1663.html
First Glance
Pfizer (Baker & McKenzie acting) has successfully appealed a decision by the Registrar of Trade Marks to accept the registration of the trade marks HERBAGRA, HERB AGRA and HERB-AGRA.
Background
The trade marks were filed by Joseph Karam (Matthews Folbigg Pty Ltd acting) in class 5 for “herbal medicines used to aid health, vitality and sexuality”.
Pfizer is the registered owner of the marks VIAGRA: No. 680407 in respect of goods in class 5 for “pharmaceuticals including compounds for treating erectile dysfunction” and No. 864135 in respect of goods in class 5 including “Analgesics, biological preparations for medical purposes, candy for medical purposes, capsules for pharmaceutical purposes, chemical preparations for pharmaceutical and medical purposes, dietetic beverages adapted for medical purposes, dietetic foods adapted for medical purposes, dietetic substances adapted for medical use, digestives for pharmaceutical purposes, glucose for medical purposes, herbal preparations, medicinal herbs, herb teas, medicinal infusions, medicinal drinks, medicinal oils, hops (extracts of-) for pharmaceutical purposes … medicinal tonics, (and) vitamin preparations …”.
Decision
Pfizer succeeded in establishing the ground of opposition under section 60 of the Trade Marks Act 1995. Gyles J was satisfied that the trade mark HERBAGRA (in respect of the designated goods) 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”. However, Gyles J did not find sufficient evidence to support sections 43 or 44 for opposition.