- explaining why they succeeded and
- offering some useful tips on how to stop such sign becoming generic.
“Dental Excellence” vs “south perth dental excellence”
A rare case of IP in a court other than the federal courts. Guess who didn’t win?
Dr Agapitos has operated a dental surgery under the name Dental Excellence from Mt Hawthorn in Perth since 2002. In (or from) 2010, he secured registration, TM No. 1388792, for Dental Excellence in respect of “dentistry” in class 44. The provisions of s 41(5) were applied.
Dr Habibi had 3 dental practices in various parts of Perth. Then in 2007, she bought from Dr McNeil his dental practice in South Perth, McNeil’s Dental Care, which promoted its services with the slogan (or tag or strap line) ‘Excellence in Dental Care’. In 2010, when Dr Habibi was updating the signage at the South Perth practice, she changed the name to South Perth Dental Excellence. It was accepted on both sides that Dr Habibi did not know of Dr Agapitos’ practice when she settled on her name. (According to Google Maps, they are about 12.5km apart or somewhere between 13 and 20 minutes drive.)
Le Miere J applied the standard test from Clark Equipment Co v Registrar of Trade Marks:
The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.
to find that Dental Excellence lacked any capacity to distinguish. So at  his Honour said:
other service providers are likely, without any improper motive, to desire to use the words ‘dental excellence’ in connection with their own services. An honest dentist may want to use the word ‘excellence’ on or in connection with ‘dental’ to indicate, or at least claim, that they provide dental services of a superior quality. ‘Dental Excellence’ may not be words which are commonly used by somebody outside the calling of dentistry but that is not the point. The point is that a dentist may well want to use the words ‘dental excellence’ to identify the services they provide and the quality of those services. The name ‘dental excellence’ at the date of filing had a sensible meaning that was descriptive of the plaintiff’s designated services. The name was apt to describe the provision of dental services of superior quality.
What is more, there was evidence that other dentists did in fact use the phrase in relation to their businesses.
Dr Agapitos could not save his registration on the basis of acquired distinctiveness under s 41(6). He put on the usual types of evidence of advertising and promotion. There was also evidence from 3 customers and a dental nurse who had gone to Dr Habibi’s practice by mistake. There was also some evidence of “licensing” of practices in other states, albeit the licences were created some two years after the trade mark was applied for. Jacobs J’s warning from British Sugar about use not equalling reputation was applied: in this case, the evidence of use, by what appears to have been a suburban dental practice, was too slight to overcome the evidence of other users.
Le Miere J finished off by (perhaps surprisingly) finding that Dr Habibi did not use “dental excellence” as a trade mark and so s 120 was not infringed. In any event, she had adopted her sign in good faith and so qualified for the defence under s 122(1)(b).
The CJEU on the revocation of a trade mark on the basis that it no longer distinguishes the relevant goods or services (genericide) – Kornspitz. Of course, they do things differently in America: Living Proof is apparently distinctive, but Perfect Hair Day is not.
Agapitos v Habibi  WASC 47 (Le Miere J)
In addition to finding Sanofi’s patent infringed, the Full Court affirmed Jagot J’s conclusion that Apotex had no implied licence to reproduce the copyright in Sanofi’s product information documents (PID).
Before a (medicinal) drug can be offered for sale in Australia, it must be registered in the Australian Register of Therapeutic Goods by the Therapeutic Goods Administration. One of the requirements for registration is the submission of a PID, describing the drug, what it can be used for and how and providing warnings about potential problems and risks.
Apotex argued that it was industry custom or usage for the suppliers of generic drugs simply to provide PID for their generic drugs in substantially the same terms as the originator’s PID. It provided evidence of many cases where this had happened, including a number of cases in which Sanofi’s generic arm had simply re-used a competitor’s original PID itself. This included:
13 drugs of which Sanofi-Aventis was the innovator and 22 generic versions of the same drug,
the top 10 drugs by value on the PBS and 62 generic versions of the same drug,
some eight drugs of which companies other than Sanofi-Aventis were the innovators and generic versions of those drugs of which Sanofi-Aventis was the issuer.
The TGA did not require PID submitted by generics to be in the same terms as the originator’s PID. If a generic’s PID was different in substance or terms, however, the TGA may require the generic to submit additional safety or efficacy data to support registration of its own formulation.
On the last day of trial, Sanofi was also allowed to introduce evidence showing that some generics did in fact prepare and register their own PIDs rather than just copy the originator’s PID.
In this state of affairs, the Full Court unanimously upheld Jagot J’s conclusion that the evidence of an implied licence was at best equivocal and so rejected the implication. (Keane CJ -, Bennett and Nicholas JJ -)
It is difficult to resist the impression that, if instead of being sober judges their Honours (at least Bennett and Nicholas JJ) were teenagers, the suggestion that a licence could be implied between parties who were not in any type of contractual or consensual relationship would have been met with:
As to the public interest, Parliament was forced to intervene (at the legislative equivalent of the speed of light) and create yet another specific defence and, in due course, Jagot J found that Apotex could rely on it as a defence (for acts done after the amendment came into force).
So far, 2012 is not proving an easy year for those trying to claim they have an implied licence to protect themselves from infringement allegations.
Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2)  FCAFC 102