ABBOTT BIOLOGICALS BV V NOVARTIS AG [2014] ATMO 60 (26 JUNE 2014)

This case involved an opposition filed by Abott Biologicals BV to the International Registration Designating Australia filed by Novartis AG in respect of the mark INFLUGARD, in respect of class 5 vaccines for human use.

The opposition was argued by way of s 44 (that the mark is substantially identical or deceptively similar to another registration or application) and s 60 (that the mark is similar to another mark that has acquired a reputation in Australia) of the Trade Marks Act1995 (Cth), with references to the Opponent’s marks, INFLUVAC and INFLUVAC POWER TO PROTECT.

The ground of opposition under s 60 was quickly dispensed with, as there was no evidence led by the Opponent as to the actual use of the trade marks. In this context, reputation cannot be assumed, and evidence of a reputation must be led.

With respect to s 44, the trade mark registrations cited by the Opponent were clearly in respect of the same or similar goods. It was only to be decided whether the marks be substantially identical or deceptively similar.

As to substantial identity, the Delegate noted that, although the marks shared a prefix, the suffixes were so different as to preclude this finding.

As to deceptive similarity, the Delegate found that, although the suffixes alluding to ‘guard’ and ‘vaccine’ have similar connotations in a sense, that the marks were sufficiently different from one another, and that “this is particularly so when viewed in the context of other trade marks on the register”. Wherein multiple registrations including INFLUON, INFLUCOL and INFLUPAN coexist in respect of similar goods, so do also multiple registration incorporating the prefix “FLU” (a more common abbreviation of “influenza”), in respect of similar goods.

The opposition was refused and the mark was allowed.

To view the Office decision, click here.