Celgene Corporation - [2013] ATMO 10

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number no. 1439752 (5) – CELOMID - in the name of Celgene Corporation.

Delegate: Bianca Irgang

Representation: Applicant: Alison McGinn of Banki Haddock Fiora

Decision: 2013 ATMO 10
Ex parte – section 43 ground for rejection – trade mark contains an INN stem – market conditions to be considered - connotation within the trade mark not strong under the circumstances – ground for rejection withdrawn and application accepted.
Background

Celgene Corporation (‘the applicant’) filed application number 1439752 on 29 July 2011 in class 5 of the International Classification of Goods and Services. Details of the application are set out below.
Trade mark:  CELOMID
Trade mark application:      1439752
Priority Date:  29 July 2011
Goods Specification:            Class 5: Pharmaceutical preparations including cytokine inhibitory drugs; pharmaceutical preparations for the treatment of certain cancers; pharmaceutical preparations that modulate the immune system
The application was examined and, on 22 November 2011 the examiner issued a first adverse report on the basis that there was a ground for rejection under section 43 of the Trade Marks Act 1995 (‘the Act’) in respect of all the goods in class 5.
The applicant made submissions in rebuttal which did not persuade the examiner. In his third report the examiner wrote that unless the applicant was able to produce evidence or other circumstances in support of the application he would initiate the rejection process. He reminded the applicant that it had the right to request a hearing.
The applicant requested a hearing which I conducted as a delegate of the Registrar of Trade Marks on 22 June 2012 in Sydney.
The Law
5. Section 33 of the Act provides:
33 Application accepted or rejected
(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it.
Note:For this Act see section 6.
(2)The Registrar may accept the application subject to conditions or limitations.
Note:For limitations see section 6.
(3)If the Registrar is satisfied that:
(a)the application has not been made in accordance with this Act; or
(b)there are grounds under this Act for rejecting it;
the Registrar must reject the application.
Note:For this Act see section 6.
(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note:For applicant see section 6.
Discussion
The ground for rejection is that pursuant to section 43 of the Act which relevantly states:
43 Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade or a sign contained in the trade mark has, the use of the trade mark in relationship to those goods or services would be likely to deceive or cause confusion.
In…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Celgene Corporation

Details

AGLC: Celgene Corporation [2013] ATMO 10
Case: [2013] ATMO 10
Decision Date: 30 January 2013

CaseChat Overview and Summary

This matter concerned an application for trade mark registration by Celgene Corporation. The dispute arose from the potential for confusion or deception in the marketplace regarding the proposed trade mark, specifically concerning the prefix "CEL-". The hearing officer, Bianca Irgang, was tasked with determining whether the use of this prefix in relation to pharmaceuticals would be likely to deceive or cause confusion, as contemplated by section 43 of the relevant legislation.

The legal issues before the court were whether the prefix "CEL-" in the proposed trade mark was sufficiently prominent or meaningful to the ordinary person in the context of pharmaceuticals, and whether its use would be likely to deceive or cause confusion, particularly in relation to cellulose derivatives. The hearing officer was required to consider the distinctiveness of the prefix, its commonality in the English language and in the pharmaceutical market, and the potential for consumers to associate it with specific pharmaceutical ingredients or uses.

In reaching her decision, the hearing officer considered the submissions made and conducted independent research into the Australian trade mark register and the marketplace. She noted that the prefix "CEL-" was already in widespread use for a variety of pharmaceuticals unrelated to cellulose derivatives, covering conditions such as cancer, influenza, and transplant rejection. The sheer volume of existing "CEL-" prefixed trade marks, registered and used by numerous companies for diverse medical applications, indicated a mature marketplace where such a prefix was not uniquely associated with a particular type of drug. Furthermore, the hearing officer acknowledged that "CEL" has a defined meaning in English as a shortened form of celluloid, and that its inclusion in words like "cell" and "celebrity" made it familiar and commonplace. Consequently, she concluded that the prefix "CEL-" was unlikely to be immediately meaningful to the buying public as indicating cellulose derivatives, and therefore its use in the proposed trade mark would not be a real and obvious danger of deception or confusion.

Accordingly, the hearing officer determined that the section 43 ground should not be raised, as the use of the proposed trade mark was unlikely to deceive or cause confusion. The application for trade mark registration was accepted for possible registration.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

I believe that all of these factors are present in this case. Accordingly, the section 43 ground should not be raised as it is unlikely that the use of the INN-stem would deceive or cause confusion.Decision Having regard to all of the above, I will accept the application for possible registration.Bianca IrgangHearing OfficerTrade Marks Hearings31 January 2013

Ratio Decidendi

Legal Principle Established

Ms McGinn concluded by observing that in the context of the application the prefix CEL- is: oa three letter prefix in an eight letter word and therefore not prominentonot pronounced in the word in the word in the same way as the INN stem due to the unusual and distinctive suffix –OMID and therefore not prominent or obviousofamiliar and commonplace to the ordinary person as a result of its inclusion in other words in the English language such as cell, cellulite, celebrity and celiac onot immediately meaningful to the “buying public”, or their advisers in respect of pharmaceuticals as being associated with cellulose derivatives, and therefore unlikely to be a real and obvious danger.Considerations Upon considering the Register and the 40 prior trade marks containing the prefix CEL- that the holder brought to my attention and which have no restricting endorsement, I conducted internet research to determine the nature of the drugs or pharmaceutical preparations in respect of which the trade marks are used. These previous CEL- trade marks are applied to pharmaceuticals which are used in relation to the treatment of cellulite, AIDS, diseases of the central nervous system, cancer and influenza. They are also applied to anti-rejection drugs for kidneys, liver and heart transplants as well as being applied in relation to vaccines and organ bath solutions, growth mediums for E.coli, hygienic wipes, hair growth shampoos, cell sprays for burns victims and drugs to stop bleeding for military purposes. The sheer quantity of CEL- prefixed trade marks on the Register that are being used on pharmaceutical goods which, at face value, have nothing to do with cellulose derivatives is overwhelming. The marketplace is full of CEL- trade marks that are applied to pharmaceuticals being used for a wide variety of different and unrelated medical conditions by a wide variety of different companies. Some of these trade marks are also registered in other jurisdictions without any mention of INN stems and I note that some of these trade marks also contain a second INN stem. I also note that CEL has a definite meaning in the English language. The Macquarie Dictionary defines CEL as:Cel: noun Film a transparent sheet, originally of celluloid, on which an image is created, used in a sequence of such images to make an animation, as for a cartoon. Also, cell, celluloid. [shortened form of celluloid] As such, I am in general agreement with the thrust of Ms McGinn’s submissions and believe that the following factors are pertinent here: a. the prefix CEL- is in comparatively widespread use in Australia in relation to pharmaceuticals which do not accord in any way with the connotation in the INN-stem. This widespread use is reflected by: i.the state of the Register ii.the marketplace.b. Use of the trade mark on drugs other than those containing cellulose derivatives would be unlikely to deceive or cause confusion because of both the factors above and, i.the maturity of the Australian marketplace ii.the regulatory regime within that marketplace iii.the availability of comprehensive Federal and State laws relating to conduct which is misleading or deceptive or likely to mislead or deceive.

Delegate:	Bianca Irgang
Representation:	Applicant: Alison McGinn of Banki Haddock Fiora
Decision:	2013 ATMO 10 Ex parte – section 43 ground for rejection – trade mark contains an INN stem – market conditions to be considered - connotation within the trade mark not strong under the circumstances – ground for rejection withdrawn and application accepted.