Amgen Inc v Bionomics Limited

Amgen Inc. (the opponent) opposed the trade mark application ANGENE by Bionomics Limited (the applicant) before Hearing Officer Mary Skivington of the Trade Marks Hearings. The dispute concerned Bionomics' application to register the trade mark ANGENE, with Amgen arguing that it should not proceed to registration.

The primary legal issues before the Hearing Officer were whether the trade mark ANGENE was substantially identical or deceptively similar to Amgen's registered trade mark AMGEN, and whether the use of ANGENE would be likely to deceive or cause confusion. Specifically, the opposition was brought under sections 44 and 60 of the relevant Act, requiring the determination of whether the marks were identical or deceptively similar and whether the goods or services were similar or closely related. Other grounds of opposition under sections 41, 43, 58, and 59 were not pursued by the opponent.

The Hearing Officer reasoned that to succeed under section 44, the opponent must demonstrate a substantially identical or deceptively similar trade mark with an earlier priority date for similar goods or services. While acknowledging Amgen's significant international and Australian reputation for its AMGEN trade mark, the Hearing Officer found that AMGEN and ANGENE were neither substantially identical nor deceptively similar. Consequently, the essential condition for establishing the ground of opposition under section 44 was not met. As this was a prerequisite for the section 60 ground, that ground also failed.

The Hearing Officer directed that the trade mark application ANGENE may proceed to registration one month from the date of the decision, unless a notice of appeal was filed. The opponent was ordered to pay the applicant's costs.