VIRBAC S A v MERIAL  NZCA 619
Court of Appeal
14 October, 17 December 2014
Trade mark opposition – assessing opponent’s reputation and risk of deception or confusion at application date – whether assessor to make assumptions about opponent’s future use in making assessment – matter not decided
Trade mark registration – whether confusing or deceptive use under s 17(1)(a) in relation to another trader’s mark - FIPROLINE dissimilar to FRONTLINE
Trade mark registration – whether confusing or deceptive use under s 17(1)(a) in relation to goods not containing fipronil
Virbac S A (“Virbac”) was a company which made and sold veterinary pharmaceutical products. Virbac sold its flea treatments in which fipronil was the active ingredient internationally from 2008 or 2009 under the mark FIPROLINE. FIPROLINE products were sold in retail outlets including supermarkets, chemists, pet stores, and from internet retailers.
The respondent was also a company which made and sold veterinary pharmaceutical products from 1994, including flea treatment products under the trade mark FRONTLINE. It sold FRONTLINE in more than 150 countries, including New Zealand. FRONTLINE contained the ingredient fipronil. The respondent had also registered FRONTLINE PLUS, FRONTLINE ORIGINAL, and FRONTLINE REGULAR. All FRONTLINE marks were registered in class 5. FRONTLINE products were sold almost exclusively through veterinary clinics. All packaging displayed the FRONTLINE mark and the work “fipronil”. As a response to FIPROLINE’s entry to the market in other countries, the respondent began marketing FRONTLINE products through the same channels as FIPROLINE products.
Virbac applied to register FIPROLINE in April 2010. Following an opposition hearing, the Assistant Commissioner of Trade Marks allowed registration of FIPROLINE in New Zealand against the respondent’s opposition.
On appeal, the High Court found that for the purposes of s 17(1)(a) Trade Marks Act 2002, FIPROLINE would deceive or confuse customers by causing them to wonder whether products associated with it were those of the respondent, and that FIPROLINE would confuse or deceive if used for products that did not contain fipronil.
Virbac appealed to the Court of Appeal on the questions of whether use of the FIPROLINE mark was likely to deceive or cause confusion (a) in relation to the FRONTLINE mark; and (b) if used for goods that do not contain fipronil. The respondent cross appealed on the ground that Virbac was deemed to have admitted through its pleadings that FIPROLINE would deceive or confuse if used for goods that do not contain fipronil.
Held, allowing the appeal in part:
(1) Where the goods are sold to the public for domestic use, the Assistant Commissioner or a court on appeal, may rely on personal experience as a member of the public . Expert evidence is not necessary and the court must act on its own opinion.
Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd  2 NZLR 50 (CA) at 62 applied.
Austin, Nichols & Co Inc v Stichting Lodestar  NZSC 10,  2 NZLR 141 at  applied.
(2) The Court was invited, for the purposes of this case only, not to take any competitive response of the respondent into account (the respondent having responded to the entry of FIPROLINE to the market in other countries by marketing its products side by side with FIPROLINE) but assume that the respondent would continue to market FRONTLINE as it had always done . The Court adopted the assumption because it was satisfied that the assumption made no difference in the end. However, it noted that the question posed by s 17 is simply whether use of the applicant’s mark is likely to deceive or confuse the public . The issue of whether, in assessing the opponent’s reputation and the risk of deception and confusion at the application date, the Assistant Commissioner must make “factually inaccurate assumptions about future circumstances of sale – such as likely sales channels” was reserved for another case .
Pioneer Hi-Bred Corn Co  2 NZLR 50 (CA) at 61 referred to.
Use of FIPROLINE in relation to FRONTLINE
(3) Consumers of FRONTLINE-branded and FIPROLINE-branded goods are the general public, having the same general characteristics . There was no reason to characterise the entire class of potential purchasers as discerning and cautious as flea treatments are not an expensive and seldom purchased product which consumers pay close attention to acquiring. Some consumers would purchase through veterinarians and were undoubtedly discerning but others would purchase from retail outlets without the benefit of advice .
(4) The Court preferred the Assistant Commissioner’s view that the marks were dissimilar because:
(a) Apart from the initial letter, the similarity was only the concluding element “line”, which evoked a neutral idea of a range of products ;
(b) FIPROLINE was an invented word and the dominant feature of the mark, FIPRO, was unusual and distinctive ;
(c) FIPRO evoked the active ingredient fipronil, and suggested to an educated purchaser that the product had a generic quality, fipronil being common to many insecticides. Consumers who knew of the active ingredient would assume that FIPROLINE derived from that active ingredient, not from FRONTLINE ;
(d) The sound of the marks was dissimilar .
(5) The Court was satisfied that use of FIPROLINE was not likely to deceive or cause confusion in relation to FRONTLINE.
Use of FIPROLINE for goods not containing fipronil
(6) The Court agreed with the High Court that FIPROLINE suggests that products bearing the mark contain fipronil . The Court considered the finding of the Assistant
Commissioner that it is likely that there is some public awareness of fipronil to be correct . The Court upheld the High Court finding that FIPROLINE is likely to cause confusion if used in connection with products that do not contain fipronil.
(7) The Court ordered that the specification of goods be narrowed to preparations that contain fipronil as the active ingredient .
(8) The Court considered the cross-appeal to be immaterial, Merial having succeeded in its substantive claim .
(9) The cross-appeal was dismissed .