This case concerned an opposition by Pfizer to the mark VEGETAL VIGRA in respect of class 5 health food supplements.
Pfizer manufactures and markets the drug ‘Viagra’ for treatment of erectile dysfunction, and the trade mark VIAGRA was well known in Australia as at the priority date.
The trade mark applicant, Global, filed no submissions, no evidence and made no appearance.
The opponent pressed only five grounds, and on each it bore the onus of proof, however the Delegate only saw it necessary to address the section 60 ground, that use of the opposed mark would be likely to deceive or cause confusion because of the reputation of another trade mark acquired before the relevant priority date.
The evidence showed that the VIAGRA mark had been continuously used in Australia for 13 years.
Interestingly, in establishing the reputation of Pfizer’s VIAGRA mark, the opponent pointed to the 2006 Federal Court decision in Pfizer Products Inc v Karam (“Herbagra”), in which Justice Gyles had found that the VIAGRA marks were “very well known in Australia and enjoyed a considerable reputation”.
The use of the opposed mark to which section 60 looks is the notional use of the mark. There was in evidence reference to third party websites which used the opposed mark in relation to “a pill used to treat erectile dysfunction (impotence) in men”.
The delegate referred to the 1999 decision in Registrar v Woolworths in which Justice French (as his honour then was) stated in relation to the confusion the confusion that section 60 contemplates:
“It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source”
Pointing to the use at third party websites as indicative of the appropriate notional use under section 60, the Delegate found for the opponent and made orders accordingly.