Aspen registered its Andosept trade mark in 2005 and launched a pharyngeal product under that name in 2008, in direct competition with the market-leading product Andolex. The Andosept product was placed on pharmacy shelves in packaging similar to that used for Andolex.
Pursuant to a complaint lodged with the ASA by the owner of the Andolex brand, Australian company Wirra, the ASA ordered Aspen to withdraw its packaging on the basis that it imitated the Andolex packaging. Aspen changed its packaging but continued to sell its product under the trade mark Andosept, which prompted Wirra to take court action.
According to Dale Healy, trade mark partner at Adams & Adams - the IP law firm acting for Wirra - the company applied for a court order cancelling Aspen's Andosept trade mark and an interdict restraining its continued use of the mark.
"Wirra's case was that the mark Andosept is so similar to its trade mark Andolex, which was registered 25 years ago, as to be likely to deceive or cause confusion. In a surprising move Aspen undertook that, if its mark was cancelled, it would not continue to use it," said Healy.
According to Healy, the undertaking meant that the court did not have to consider Wirra's call for an interdict. Aspen's fate, therefore, depended entirely on whether or not its registered trade mark would survive the attack.
"The court found that the trade marks were indeed deceptively similar and ordered the cancellation of Aspen's mark. This was on the basis that it was incorrectly registered in the face of Wirra's registration for Andolex and its established reputation in that mark and that Aspen's mark was an entry that wrongly remained on the Register of Trade Marks," said Healy.
Healy said that the court took into account that both parties' products were over-the-counter medicines and, unlike the case with prescription-only medicines, confusion could not be prevented by pharmacists prescribing the correct medicine. The fact that the mark Andosept incorporates the unique and distinctive prefix Ando - also weighed heavily with the court.
"Ultimately," said Healy, "the Registrar of Trade Marks, who was cited as a respondent in the case, was directed by the court to remove Aspen's trade mark registration from his register. Barring a successful appeal by Aspen, the Registrar's removal of the trade mark from his register will signal the end of Aspen's sale of its Andosept product."
