FIPROLINE decision overturned by Court of Appeal

New Zealand

In Virbac SA v Merial (CA805/2013 [2014] NZCA 619, December 17 2014), the Court of Appeal of New Zealand has overturned a High Court decision which held that the opposed mark FIPROLINE would be confused with the opponent's FRONTLINE mark, for veterinary products. The Court of Appeal's decision has addressed what many had seen as an unusual assessment made by the High Court, when assessing whether those marks were likely to be confused with one another.

Virbac SA applied to register the trademark FIPROLINE in Class 5 for "veterinary preparations, particularly an anti-parasitic preparation for external use".

Merial, which had used and extensively promoted veterinary products in Class 5 under the registered FRONTLINE trademark, opposed registration of FIPROLINE as similar and confusing.

Initially, the New Zealand assistant commissioner rejected the opposition, holding that the marks FRONTLINE and FIPROLINE were visually and aurally dissimilar, and were also not similar conceptually. However, Merial successfully appealed the decision to the High Court.  

In an assessment which may have alarmed manufacturers of veterinary or pharmaceutical products, Justice Mallon of the High Court concluded that there were quite strong similarities between the marks FIPROLINE and FRONTLINE, and registration was refused. The decision was considered unusual by some, as it is reasonably common for competitors in those markets to create and use distinguishable trademarks that nonetheless allude to the same key active ingredients – in this case fipronil.  

Upon appeal, the Court of Appeal of New Zealand returned to a more conventional assessment process when assessing whether FIPROLINE and FRONTLINE would be confused with one another. The court preferred the assistant commissioner's view that the marks are dissimilar for five reasons:
  1. The only similarity between the marks apart from the initial letter 'F' is the concluding element 'line', which in context evokes the neutral idea of a range of products.
  2. Merial's FRONTLINE mark is a compound noun whose parts 'front' and 'line' have an ordinary meaning as identified by the assistant commissioner, whilst FIPROLINE is an invented word having no ordinary meaning and in which 'FIPRO' is the dominant feature of the mark.
  3. 'FIPRO' evokes the active ingredient fipronil "and further suggests to an educated purchaser that the product has a generic quality, fipronil being common to many insecticides". This assessment was particularly critical and may give comfort to manufacturers of pharmaceutical and veterinary preparations, as the Court of Appeal went on to note that one of the High Court's assessment processes "would risk giving Merial intellectual property rights to the name of an active ingredient that is now common to the trade. In our opinion, consumers who know of the active ingredient are less rather than more likely to confuse the two marks; they will assume that FIPROLINE derives not from FRONTLINE but from the active ingredient".
  4. The sound of the two marks is dissimilar, noting that FIPROLINE has three syllables not two.
  5. Even if allowance were made for the products to be sold side by side in supermarkets and applying the doctrine of 'imperfect recollection', the court remained of the view that even in those circumstances consumers were not likely to be confused.
As the court had concluded that 'FIPRO' is an unusual and distinctive sound and that FIPROLINE suggests that products bearing the mark contain fipronil, the court agreed with the High Court that FIPROLINE was likely to cause confusion if it were used in connection with products that do not contain fipronil. As such, the court ordered that the FIPROLINE mark be registered, but only in respect of goods containing the active ingredient FIPRONIL.

The Court of Appeal's process may restore confidence to trademark lawyers in New Zealand after an assessment process in the High Court that may have raised alarm amongst trademark owners. Rather than creating any new law, the decision recognises, and is consistent with, the well-known general principles of New Zealand trademark law when assessing whether one mark is likely to be confused with another.

The case also demonstrates, once again, that there are some key points for parties involved in New Zealand trademark opposition proceedings to consider, including:
  1. An opposed mark will not be considered in isolation in New Zealand, but will always be placed in context of the market into which the mark will be used.
  2. Any special factors relating to that market will be critical in assessing a risk of confusion.
  3. The meaning or impression conveyed by the mark will be highly relevant in assessing any risk of confusion.  In this case 'FIPRO' was a dominant feature of the opposed mark and was held to allude clearly to the active ingredient fipronil in the goods sold under the respective parties' marks.

As with the Court of Appeal's assessment process in relation to registration of the opposed OPTIMIZE PRO label (here), this case is consistent with the established principles that would ordinarily be applied in New Zealand trademark oppositions.  

Nick Holmes, Davies Collison Cave, Melbourne

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