Sanofi v Eremad Pty Ltd [2013] ATMO 94

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This matter concerned an opposition to registration of the mark CLOVIX 75 in respect of class 5 Pharmaceutical preparations being products containing clopidogrel. The mark was opposed by French healthcare company, Sanofi (née Sanofi-Aventis).

Sanofi led evidence in relation to its trade mark PLAVIX used in respect of a pharma preparation also containing clopidogrel. It was explained in evidence from Sanofi:

“Clopidogrel is the International Non-Proprietary Name (INN) for the chemical compound discovered by Sanofi-aventis in 1997 that inhibits platelet aggregation in the site of blood vessel damage, and so inhibits thrombosis or clot formation. It is used to reduce the risk of heart attacks, strokes and death in persons who have heart disease, have suffered a heart attack or recent stroke, or have blood circulation disease (peripheral vascular disease).”

While five grounds were pressed in opposition to the trade mark application, the only ground necessary for consideration was that under section 60, 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.

Sanofi led evidence that PLAVIX had been used continuously since 1998 in Australia. The delegate stated that the reputation of the Plavix product in Australia is “clearly established” and that as at the priority date of the opposed application, the opponent was one of only two competing products in the market.

The submission as to confusion was that the “vix” was a ‘strong’ suffix, “clo” was a prefix readily associated with clopidogrel, and that Plaxiv’s position in the market was strong and exclusive.  The opponent argued the applicant had an intentional strategy of marketing a brand as close as possible to the opponent, a market leader, in a market where market leader originators often occupy a space in the market as a generic as well.

The applicant rebutted on several points, but poignantly said that the market of the products was sophisticated and weary of differences in the markets, as:

“customers for both its CLOVIX 75, and the opponent’s PLAVIX products, are exclusively highly trained, computer-assisted professionals, medical practitioners and pharmacists, apparently very far removed from the ‘men of all ages and from all walks of life’”.

It was also submitted that the inclusion of ‘75’ was likely to distinguished the parties goods. The delegate ultimately decided to refuse registration, as the conclusion of the ‘75’ was unlikely to override any confusion, and while the market was sophisticated, it was not sufficient to negate the potential confusion.

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