Amgen Inc v Bionomics Limited

[2005] ATMO 23

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Amgen Inc to registration of trade mark application 925575 (5) - ANGENE - filed in the name of Bionomics Limited.

Delegate:	Mary Skivington
Representation:	Opponent: Ms Sue Chrysanthou of counsel instructed by Spruson & Ferguson, Patent and Trade Mark Attorneys. Applicant: Mr Francis Placanica, Vice President, Busines Development of Bionomics Limited.
Decision:	Grounds of opposition under sections 42(b) 44 and 60 not established. Costs awarded against the opponent.

Background

1. Bionomics Limited, (‘the applicant’), filed trade mark application number 925575, on 2 September 2002, to register the trade mark, ANGENE, for the following goods and services in classes 5, 42 and 44 respectively:

   Pharmaceutical preparations and substances; pharmaceutical reagents and antibodies; diagnostic preparations and substances for medical use.

   Research and development; drug discovery and development; provision of information, reporting and consulting in the fields of biotechnology and research and development.

   Medical and diagnostic services including medical testing and clinical studies; screening services; provision of information, reporting and consulting in the fields of pharmaceuticals, medicine and diagnostics.

2. Acceptance for possible registration of the trade mark was advertised in the Australian Official Journal of Trade Marks on 9 January 2003.

3. On 8 April 2003, Amgen Inc, (‘the opponent’), filed notice of opposition to registration of the trade mark pursuant to section 52 of the Trade Marks Act1995, (‘the Act’). The notice specified grounds of opposition under sections 41, 42, 44, 58, 59 and 60 of the Act. In due course the parties served and filed their evidence in support of the opposition and evidence in answer. The opponent elected not to serve evidence in reply to the evidence in answer and applied to be heard. On 24 January 2005, I heard the matter in Canberra, as a delegate of the Registrar of Trade Marks.

4. The opponent was represented by Ms Sue Chrysanthou of counsel, instructed by Spruson & Ferguson, Patent and Trade Mark Attorneys. Mr Francis Placanica, Vice President, Business Development of the applicant company appeared on behalf of the applicant.

   The evidence

5. The evidence filed in these proceedings consists of the following:

   Evidence in support

Date	Declarant	Description	Exhibits
7 April 2004	Stuart L Watt	Vice President, Law of Amgen Inc.	AMG-1 to AMG-4

Evidence in answer

Date	Declarant	Description	Exhibits
29 July 2004	Deborah Ann Rathjen	CEO and Managing Director of Bionomics Limited.	DAR-1 to DAR-7

Evidence in support- Stuart L Watt

1. Mr Watt declares that the opponent, of California, United States of America, was founded in 1980. He declares that the opponent pioneered the development of products based on advances in recombinant DNA and molecular biology. He reports that the opponent is now the world’s largest biotechnology company and aspires to be the world’s best human therapeutics company. Mr Watt declares that its Australian subsidiary, Amgen Australia Pty Ltd was established in 1991 and that it has become renowned for carrying out clinical research and development. Mr Watt reports that in addition to its clinical research and development Amgen markets pharmaceutical products in Australia. Exhibit AMG-4 is a list showing registration of the trade mark, AMGEN, in ninety-two countries. In his declaration Mr Watt provides sales figures for the opponent’s goods worldwide, as well as the figures for sales in Australia. I regard the value of the worldwide sales as enormous and the Australian sales as most substantial.

Evidence in answer – Deborah Ann Rathjen

1. Ms Rathjen declares that she has read the evidence in support and does not consider that it supports any of the grounds of opposition. Her declaration is largely given to submissions in respect of the grounds of opposition. Exhibit DAR-1 comprises copies of twenty-seven announcements to the Australian Stock Exchange, made by the applicant, between October 2002 and July 2004 showing use of the trade mark, ANGENE. Exhibits DAR-3, DAR-4 and DAR-5 are respectively company profiles, fact sheets and summaries related to ANGENE.

   Grounds of opposition

2. At the hearing Ms Chrysanthou canvassed grounds of opposition under the provisions of sections 42, 44 and 60 of the Act. The remaining grounds under the provisions of sections 41, 43, 58 and 59 were not pressed and I now find that they have not been established.

   Submissions and the law

3. In order to establish a ground of opposition under the provisions of section 44 of the Act, the opponent must establish there is a substantially identical or deceptively similar trade mark application or registration, with an earlier priority date, in respect of similar goods or closely related services, in the name of a person other than the applicant.

4. Section 10 of the Act provides that a deceptively similar trade mark is one that so nearly resembles the other trade mark that it is likely to deceive or cause confusion.

5. Section 14 of the Act defines similar goods as goods that are the same as the other goods or of the same description as the other goods. Similar services are services that are the same as the other services or of the same description as the other services.

6. In support of its ground of opposition under section 44, Ms Chrysanthou said that the opponent relied on its registered trade mark, number 512065, for the trade mark AMGEN which has been registered in Australia since 1989 for the following goods in class 5:

   Pharmaceutical preparations, namely, erythropoietin for use in treating chronic anemia, granulocyte colony stimulating factor and granulocyte-macrophage colony stimulating factor for use in restoring the level of white blood cells, hepatitis B vaccine, interferon and interleukin 2 for use in anticancer and antiviral applications, epidermal growth factor and platelet derived growth factor for use in treating surgical or soft tissue damage; and veterinary preparations for animal health care, namely, bovine somatotropin for use in increasing milk yield in dairy cattle and porcine somatotropin for use in reducing the fat content of pork.

1. It cannot be disputed that the goods are the same. The applicant’s specification begins ‘Pharmaceutical preparations and substances’, without limitation to particular pharmaceuticals and thus embraces the particular pharmaceuticals specified in the opponent’s registration. I also consider that it is self evident that a close relationship exists between pharmaceuticals and drug discovery and development  as specified in class 42 of the subject application and medical testing and clinical studies and the provision of information, reporting and consulting in the fields of pharmaceuticals specified in class 44.  These goods and services are all part of the one industry.

2. Ms Chrysanthou submitted that if the essential features of the marks are considered and their similarities and differences compared, per Windeyer J, in Shell Co of Australia v Esso Standard Oil, (1963) 109 CLR 407, AMGEN and ANGENE must be found to be substantially identical. In support of this she submitted that both marks are of similar length, one consisting of five letters and the other of six and that the essential feature of both marks is the initial letter ’A’. Further, she said, both trade marks consist of a single word in plain typescript without any device elements. Ms Chrysanthou submitted that the only differences between the marks are inessential differences these being that the second letter of one is the letter ‘M’ and the second letter of the other is the letter ‘N’ and the addition of a final letter ‘E’ in the subject mark . Ms Chrysanthou claimed that in a side-by-side comparison the final letter ‘E’ would be overlooked.

3. Mr Placanica said that while the appropriate tests for determining substantial identity are to be found in Shell, above, an application of these tests does not lead to a conclusion that the trade marks are substantially identical. He submitted that the marks are of a different length so that visually they are different and phonetically they are also different which leads to an ‘impression of dissimilarity’. Mr Placanica further submitted that the essential feature of the subject mark is its suffix being the known word, GENE. He said that it is by this element that the trade mark will be identified and understood.

4. While I consider the letters ‘M’ and ‘N’ may well be seen as substantially identical when handwritten, in typescript the differences are obvious and the letters are not likely to be confused. AMGEN and ANGENE are also comparatively short words so that a one letter difference in the total number of letters may constitute an obvious material difference. In this case, far from being an ‘inessential difference’, the final letter ‘E’ in ANGENE gives the trade mark a quite different look and sound from AMGEN. The final letter ‘E’ has the effect of altering the pronunciation of the suffix so that it is pronounced with a long ‘ee’ sound whereas the opponent’s trade mark AMGEN is pronounced with a short ‘e’ sound. These are obvious material differences. I find that AMGEN and ANGENE are not substantially identical.

5. Ms Chrysanthou said that in assessing if the marks are deceptively similar consideration must be given to the impression that ordinary consumers have of a mark based on their recollection of it, per Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 658. She submitted that the tests to be applied were summarised by Parker J in Re Application by Pianotist Co. Ltd, (1906) 23 RPC 774 at 777 where he said,

   You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods – then you may refuse the registration, or rather you must refuse the registration in that case.

6. Ms Chrysanthou submitted that as neither trade mark is a known word in the English language confusion is more likely, particularly, she argued, because of the similarity in pronunciation.  She noted that in Berlei Hestia Industries Ltd v The Bali Company Inc, 129 CLR 353, it was held that similarity in pronunciation was a factor to be considered when determining deceptive similarity.

7. Further, she argued that GEN and GENE would be understood and be remembered as being derived from GENETIC and that any differences in the appearance of the marks must be balanced against the general impression this would leave in the minds of consumers.  Ms Chrysanthou noted that the 'idea' of a trade mark was considered in Jafferjee v Scarlett, (1973) 57 CLR 115 at 121-122 per Latham CJ where he said,

   Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark, first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.

8. Mr Placanica submitted that consideration should be given to all the circumstances of trade in these goods. He said the likely consumers of the products produced by both parties are skilled professionals who would not be deceived or confused.

9. I have carefully weighed the arguments for and against the existence of deceptive similarity between the trade marks in question. Neither party has provided any instances of confusion between the trade marks, although both are clearly in use, so that I must consider the matter of deceptive similarity from a hypothetical point of view. Both trade marks are simple words beginning with the letter ‘A’ and contain the letters GEN so that there is certainly a passing resemblance between them. However, within the pharmaceutical industry there are many trade marks bearing a closer similarity to each other than is usual for trade marks in other industries. This is not surprising if one considers that pharmaceutical names frequently contain a common stem that indicates the derivation of the product or its nature. Stems such as sulfa, cort and cillin, for instance, indicate that the products are sulfonamides, corticosteroids and antibiotics respectively. The opponent’s goods are preparations that will be prescribed and very likely, I think, administered by skilled professionals well versed in the need to take special care in the prescribing and administering of such goods. I do not think that these consumers would be deceived or confused. The applicant’s goods cover ‘pharmaceutical preparations and substances’. The online edition of The Macquarie Dictionary defines a pharmaceutical as ‘an item, especially a medicine, sold at a pharmacy’. By definition this includes items for ‘over the counter’ purchase from a pharmacy by ordinary members of the public.  I need to consider if consumers who knows of the AMGEN trade mark but retain an imperfect recollection of it are likely to be deceived or confused by use of ANGENE on such products.

10. French J in Registrar of Trade Marks v Woolworths, 45 IPR 411 at 426 said:

    The position now is that the registrar and the court at first instance would need to be satisfied that there was a reasonable likelihood of deception or confusion before denying acceptance of the application for registration.

    And at 428:

    [T]he trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source. It is enough if the ordinary person entertains a reasonable doubt.'

11. Consumers generally take reasonable care with the purchase of goods used for health purposes and while the two trade marks, AMGEN and ANGENE do share some letters in common this is not enough to deceive or confuse them.  AMGEN is a word that immediately strikes the eye as being different and out of the ordinary. Known  words in the English language do not begin with the letters AMG.  On the other hand many English words begin with the letters AN and a number of pharmaceuticals begin with the letters ANG so that ANGENE does not look particularly out of the ordinary. Nor do I think that consumers will necessarily focus on the suffix GENE. I think it is just as likely that ordinary consumers would focus on the first three letters presuming that the product was for the treatment of heart conditions such as angina. Further the addition of the final ‘E’ in ANGENE makes it significantly different both visually and phonetically from AMGEN. I find that the net impressions left by both trade marks is sufficiently unalike so as to differentiate them. These trade marks are not deceptively similar. 

12. As I have found that the trade marks are neither substantially identical not deceptively similar this ground of opposition has not been established.

    Section 42(b)

13. Section 42(b) of the Act provides that a trade mark application must be rejected if its use would be contrary to law.

14. When assessing whether use would be contrary to law under subsection 42(b) it has been held that the Registrar is obliged to take into account the operation of laws and legislation other than the Trade Marks Act 1995: Madgwick J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.

15. Here, the opponent alleges that use of the trade mark would contravene Sections 52 and 53 of the Trade Practices Act 1975 on the basis that use would lead consumers into thinking that the applicant’s goods were in some way connected with the opponent.

16. Ms Chrysanthou submitted that while the applicant may be acting honestly in applying its trade mark ANGENE to the goods and services its conduct in so doing is likely to mislead or deceive consumers of medical and pharmacological items, that is, the public at large. In Advantage Rent-A-Car, above, Madgwick J confirmed that the test to be satisfied was that use would, rather than could, be contrary to law. The relevant standard to be applied, as was held in Equity Access Pty Limited v Westpac Banking Corporation (1989) 16 IPR 431, is that there must be a "real or not remote chance or possibility" of a reasonably significant number of people being misled or deceived.

17. On the basis of the evidence and submissions before me, I am not satisfied that use of ANGENE on any of the goods specified in the application would cause, or be likely to cause consumers to be misled or deceived.  This ground of opposition is not established.

    Section 60

18. In order to satisfy a ground of opposition under the provisions of section 60 of the Act, the opponent must establish that the applied for trade mark is substantially identical with or deceptively similar to another trade mark or trade marks that have acquired a reputation in Australia before the priority date of the applied for trade mark and, because of that reputation, use by the applicant of its trade mark, would be likely to deceive or cause confusion.

19. The evidence before me establishes that well before the priority date of the subject application, the opponent had acquired a very considerable reputation both internationally and in Australia for its trade mark AMGEN. However, as I have found that AMGEN and ANGENE are neither substantially identical nor deceptively similar the first condition necessary to establish the ground of opposition has not been met. As a consequence the section 60 ground has not been established.

    Decision

20. The opponent has not established any of its grounds of opposition. Therefore, I direct that trade mark application number 925575 may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

    Costs

21. The applicant sought its costs.  The general rule in awarding costs is that costs are usually awarded against the unsuccessful party, unless there is some conduct on the part of the successful party that would justify a departure from the general rule.

22. I see no reason why costs should not follow the general rule. I award costs against the unsuccessful opponent and direct that the opponent pay the costs of the applicant in accordance with the Official Scale.

    Mary Skivington
    Hearing Officer
    Trade Marks Hearings
    3 May 2005