In Virbac SA v Merial the Court of Appeal partially allowed Virbac’s appeal, holding that FIPROLINE could be registered – although only for goods containing fipronil.
The earlier High Court decision held that there are sufficient visual and phonetic similarities between Merial’s FRONTLINE and Virbac’s FIPROLINE marks to make confusion likely where there is imperfect recollection or non-discerning or incautious purchasers. The Judge also held that the market awareness of the active ingredient fipronil together with the unusual and distinctive sound of the shared prefix for fipronil and FIPROLINE would make it likely that the purchasing public expects FIPROLINE to contain fipronil. The Judge considered the brand and the ingredient to be visually, phonetically and conceptually similar and that it would likely cause confusion in the relevant market if FIPROLINE is used to sell products that do not contain fipronil.
The Court of Appeal agreed with the High Court Judge in rejecting the Assistant Commissioner’s finding that all of the purchasing public could be considered discerning and cautious. However, the Court of Appeal nonetheless preferred the Assistant Commissioner’s view that FRONTLINE and FIPROLINE are dissimilar and unlikely to be confused. The former has an identifiable meaning and contains two syllables, whereas the latter is an invented word containing three syllables, and the common suffix merely invokes the neutral idea of a range of products. The Court of Appeal agreed with the Judge’s finding that FIPROLINE and fipronil are visually, phonetically and conceptually similar and that it would likely cause confusion in the relevant market if FIPROLINE is used to sell products that do not contain fipronil. Consequently, the Judge allowed FIPROLINE to proceed to registration with a suitably restricted goods specification.
