NOVARTIS AG V ALPHA HELIX INC. [2014] ATMO 45

In this case Novartis, the opponent, opposed an International Registration Designating Australia for the mark VOLTAGEN in relation to pre-workout supplements.

The opponent was the owner of the mark VOLTAREN, used in relation to the market leading athletic topical rubs.

The application was opposed on several grounds, however s 60 (that the mark was similar to a mark that has acquired a reputation in Australia) was considered.

Evidence was led as to the reputation of the Voltaren products, showing its market share of 30%, and annual sales in the tens of millions.

The submissions of the opponent were to the effect that the relevant marks bore a visual and aural similarity, being eight letters in length each and only one letter differentiating them. Further, the reputation the opponent’s mark had acquired included that as a product for ‘boosting’ athletic performance by with use before exercise(similar to the applicant’s mark). As such this was likely to cause confusion amongst those in the market of some sort of connection.

The application to register the mark was successfully opposed.

To view the Office decision, click here.