Pfizer successfully raises challenge against HERB-AGRA marks


In Pfizer Products Inc v Karam, the Federal Court of Australia has upheld an appeal by Pfizer Products Inc in relation to a decision of the registrar of trademarks allowing an application for registration of the series of marks HERB AGRA, HERBAGRA and HERB-AGRA (the HERB-AGRA marks) for "herbal medicines used to aid health, vitality and sexuality" in Class 5 of the Nice Classification.

Pfizer is the registered owner of the well-known mark VIAGRA for "compounds for treating erectile dysfunction" and owns a number of other registrations for VIAGRA including two defensive registrations.

The principal issues raised in the case were: (i) the onus of proof in opposition proceedings; and (ii) the meaning of 'deceptive similarity' in the context of an opposition based on reputation.

Pfizer submitted that the onus of proof is to be established as in the case of civil proceedings (ie, on the balance of probabilities). Karam argued that a ground of opposition can be made out only if the court is satisfied that the mark clearly should not be registered. The Federal Court considered the various lines of authority supporting both views and determined that grounds of opposition need only be established, rather than clearly established. That said, the court intimated that an appeal to the Full Bench of the Federal Court would be desirable for clarification of this issue.

Questions of deceptive similarity arise in the context of reputation under Section 60 of the Trademarks Act 1995 and in a comparison of two marks under Section 44 of the act. The Trademarks Office has generally considered the two references to be the same, meaning that if two marks are not sufficiently similar to maintain an opposition under Section 44 then Section 60 need not be considered because the threshold issue of deceptive similarity could not be established. However, the court viewed the two as separate issues.

In relation to Section 44, he considered the marks themselves without reference to any reputation and found that they are not deceptively similar, while in relation to Section 60, he found that the marks are deceptively similar because of Pfizer's reputation in its VIAGRA trademark. Relevant to this conclusion were his views on the distinctiveness of the suffix 'AGRA', including the fact that it has no relevant meaning and his view that it forms a clear link between the mark VIAGRA and the HERB-AGRA marks. He found that many potential purchasers would not know that VIAGRA is available only on prescription and that even if they did, there would be no reason for them to reject the idea that there might be a complementary or herbal version of the prescription drug.

The required confusion need not persist to the point of sale and in light of Pfizer's reputation in VIAGRA, he found that there was a sufficient likelihood of confusion. However, he expressed the view that he would not have found in Pfizer's favour if the onus required that the ground of opposition be clearly established. Thus, he invited an appeal on that issue, although it is unlikely that there will be any appeal.

Recent changes to Australia's Trademarks Act have removed the requirement for the marks concerned to be deceptively similar in an opposition based on reputation, so that an opposition under that section is now concerned solely with the likelihood of confusion. The present case provides some guidance as to when this may be relevant.

The registrar's orders were set aside and Karam was ordered to pay Pfizer's appeal and opposition proceedings costs.

Sean McManis and Tim Clarke, Shelston IP, Sydney

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