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Griffith Hack - Pfizer Products Inc v Karam

Griffith Hack has released a casenote on Pfizer Products Inc v Karam [2006] FCA 1663.

Pfizer had opposed the registration of the trade mark HERBAGRA in respect of herbal medicines used to aid health, vitality and sexuality on the basis that consumers would be confused with Pfizer’s VIAGRA trade marks.

Karam had relied on authority suggesting that an opposition should only be upheld if the Court is satisfied that the trade mark should clearly not be registered.  However, Justice Gyles did not demand a higher burden of proof and applied the “ordinary” burden of
proof (an opponent need only show that a ground of opposition has been established).

Link to Griffith Hack’s Need to Know article


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Blake Dawson Waldron - IP Bites

Brief news reports from�Blake Dawson Waldron’s IP@BDW publication�

  • Rapid rise in domain name dispute resolution - “The World Intellectual Property Organisation (WIPO) Arbitration and Media Centre recently reported that it has handled over 25,000 internet domain name cases since its adoption of the Uniform Dispute Resolution Policy (UDRP) and Specific Registry Policies.” (Sarita Walpola, Lawyer)
  • �Dove Summer Glow� campaign misleading�- “In Johnson & Johnson Pacific Pty Ltd v Unilever Australia Limited (No 2) [2006] FCA 1646, handed down on 29 November 2006, the Federal Court found that certain representations made in Unilever�s Dove Summer Glow advertising campaign amounted to misleading and deceptive conduct in contravention of section 52 of the Trade Practices Act 1974 (Cth).” (Georgia Knox, Summer Clerk)
  • WIPO registers 900,000th trade mark under Madrid Protocol - “On 27 October 2006 the World Intellectual Property Organisation (WIPO) announced the registration of the 900,000th trade mark under the international registration system established by the Madrid Agreement and Madrid Protocol. At the current rate of trade mark filings, WIPO expects the one million mark will be reached during 2009.” (Sarita Walpola, Lawyer)
  • Pfizer successful in trade mark dispute - “Pfizer Products Inc. (Pfizer), owner of the VIAGRA trade marks, has successfully challenged the registration of the marks HERBAGRA, HERB AGRA and HERB-AGRA by Joseph Karam (Karam).� Karam sought to register these marks in respect of the goods in class 5 described as herbal medicines used to aid health, vitality and sexuality.” (Tim Creek, Articled Clerk)
  • Kazaa settles 3 US lawsuits -”Kazaa, the Australian-operated peer to peer file-sharing network, has reached an agreement in principle to settle proceedings brought by the US National Music Publishers Association.” (Arthur Artinian, Lawyer)
  • Sweet smell of success - “In the UK, L�Oreal has succeeded in a trade mark infringement action against 7 companies that imported and distributed look-alike versions of two of L�Oreal�s products, Tresor and Miracle.” (David Chin, Lawyer)

Link to�Blake Dawson Waldron article�


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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.


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