23 December, 2014
Spruson

GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited v AFT Pharmaceuticals Limited [2014] ATMO 100

GlaxoSmithKline LLC, SmithKline Beecham (Australia) Pty Ltd and SmithKline Beecham Limited v AFT Pharmaceuticals Limited [2014] ATMO 100

Application by AFT Pharmaceuticals Limited to register its “PARACETAMOL OSTEO-TAB” trademark was opposed by three companies.

Considering section 41 first, the Hearing Officer came to the view that the opposed trade mark is at least to some extent inherently adapted to distinguish the Applicant’s pharmaceutical goods. However, given the prominent placement of the INN (International Non-proprietary Name) “paracetamol” in the opposed trade mark, the Hearing Officer found it necessary to consider the Applicant’s use of the mark. Based on the evidence, the Hearing Officer was satisfied that the opposed trade mark had the requisite capacity to distinguish.

Turning to section 60, the Opponents’ arguments relied on the reputation of the mark PANADOL Osteo. While the Hearing Officer agreed that the Opponents’ mark may have had the requisite reputation, he was not satisfied that deception or confusion was likely given the differences between the marks. Further, the fact that the relevant products were pharmacy medicine moderated by a pharmacist rather than being selected directly by the purchaser was relevant for the Hearing Officer.

Sections 42(b) and 62A were also quickly commented on and dismissed by the Hearing Officer.

The opposition failed on all the grounds pressed.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.


KHAJAQUE KORTIAN

Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Sydney, Australia

DANIEL WILSON

Associate / Trade Mark Attorney
Trade Marks Team
Sydney, Australia

 

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