Celgene Corporation

[2012] ATMO 119

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia no. 1465111 (5) – APR - in the name of Celgene Corporation.

Delegate:	Bianca Irgang
Representation:	Applicant: Alison McGinn of Banki Haddock Fiora
Decision:	2012 ATMO 119 Ex parte - Regulation 17A.24 – section 41 ground for rejection – trade mark descriptive and likely to be used by other traders without improper motive – IRDA rejected.

Background

1. Celgene Corporation (‘the holder’) has applied for the extension of protection of its trade mark to Australia.  Details of its international Registration Designating Australia (‘IRDA’) are as follows:

   Trade mark:  APR

   IRDA no:  1465111
   
   International Registration:    1098651

   Priority Date:  20 October 2011

   Convention details:               12 October 2011
     85445607
     United States of America

   Goods Specification:             Class 5: Pharmaceutical preparations, namely, cytokine inhibitory drugs; pharmaceutical preparations that modulate the immune system; pharmaceutical preparations for the treatment of certain cancers and blood diseases

2. The IRDA was examined and, on 20 December 2011 the examiner issued a Notice of Provisional Refusal on the basis that there was a ground for rejection under section 41(5) of the Trade Marks Act 1995 (‘the Act’) in respect of all the goods in class 5. 

3. The holder made submissions in rebuttal which did not persuade the examiner.  In her third report the examiner wrote that unless the holder was able to produce evidence or other circumstances in support of the application she would initiate the rejection process. She reminded the holder that it had the right to request a renunciation of the Australian designation or to request a hearing.

4. The holder requested a hearing which I conducted as a delegate of the Registrar of Trade Marks on 22 June 2012 in Sydney.

   The Law

5. 17A.28            Grounds for rejecting IRDA

   (1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

   (2)Sections 39 to 44 apply in relation to an IRDA as if:

   (a)a reference in those sections:

   (i)to an application for the registration of a trade mark were a reference to the IRDA; and

   (ii)to an applicant were a reference to the holder of the IRDA; and

   (b)the reference in paragraph 41 (6) (a) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and

   (c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person; and

   (d)each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.

   Discussion

6. The ground for rejection is that pursuant to section 41 of the Act which relevantly states:

   41       Trade mark not distinguishing applicant’s goods or services

   (5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

   (a)the Registrar is to consider whether, because of the combined effect of the following:

   (i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii)the use, or intended use, of the trade mark by the applicant;

   (iii)any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

   (b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services – the trade mark is taken to be capable of distinguishing the applicant’s goods and services from the goods and services of other persons; and

   (c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services – the trade mark is taken not to be capable of distinguishing the applicants goods or services from the goods or services of other persons.

7. Justice Branson sets the structure and operation of section 41 of the Act in Blount Inc v Registrar of Trade Marks[1] with the words:

   [1] [1998] 440 FCA (1 May 1998), 40 IPR 498 at 504

   Subsections (3) - (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the Registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application.

8. The test to be applied, for me to reach one of Justice Branson’s conclusions above, is found in the words of Justice Kitto in ClarkEquipment Co v Registrar of Trade Marks[2]:

   …. whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [2] (1964) 111 CLR 511 at 514

9. Superimposed on this test (which was formulated under the Trade Marks Act 1955) is the so called ‘presumption of registrability’, whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it.

10. The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” (per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd[3].

    [3] (1965) 112 CLR 537

11. Trade marks that are not inherently adapted to distinguish goods and services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate the kind, quality, quantity, intended purpose, value, geographic origin, or some other characteristic, of goods or services, or the time of production of goods or the rendering of the services. In other words, these are trade marks that consist of words or graphical elements that are likely to be required by other traders in the same industry in the ordinary course of conducting their business. If the trade mark is found to lack inherent capacity to distinguish, section 41 also provides a scheme for the assessment of whether the trade mark has acquired capacity to distinguish the goods through its use in trade.[4]

    [4] Blount Inc v Registrar of Trade Marks supra

12. Justice Branson sets out the way to registration for such applications by means of the combined effect of the ‘extent’ that the trade mark is ‘inherently adapted to distinguish the designated goods or services’ as being those of the applicant; ‘the use, or intended use, of the trade mark by the applicant’ and ‘any other circumstances’. However, the holder has not provided any evidence of use or intended use of its APR trade mark.

13. The holder has submitted that the trade mark APR is capable of distinguishing the designated goods as other traders in the same goods would not need to use the expression APR in the ordinary and legitimate course of trade.

14. The information on the official file shows that APR is not capable of distinguishing the goods because APR is a medical acronym for acute-phase response (also called acute-phase reaction). An acute-phase response is a series of reactions within the human body which are initiated in response to infection, trauma or malignancy.  It is an innate body defence which involves the increased production of blood proteins referred to as acute phase proteins. The reactions aim to prevent ongoing tissue damage, isolate and destroy the infective organism and activate the repair process. On the basis of this information the examiner considered that consumers seeing goods branded with the acronym APR would believe they were designed for use in relation to the body’s acute phase response. In other words APR is an apt description for goods affecting the body’s acute phase response and it is one which other traders in the same goods would need to use.

15. The holder has argued:

    ‘The existence of the phrase "acute-phase response", which refers to the body’s natural reaction in response to infection, being an innate body defence involving increased blood proteins, does not mean that the trade mark APR is not capable of distinguishing "pharmaceutical preparations". We submit that this innate body defence does not indicate the nature of the relevant goods.

    The term "acute-phase response” refers to the body's natural response to infection, whereas the APR trade mark is to be used in relation to pharmaceutical preparations that are not connected with that natural response.
    Acute-phase response, according to our review of the literature, is a natural physiological reaction which is not related to the use of pharmaceuticals.
    
    Acute-phase response describes the physiological reaction, whereas APR is a trade mark for a product that is not related to the reaction. One does not stand for the other and one is not described by the other. We submit that an acronym cannot be common or well known in relation to something it does not stand for or relate to.’

16. However, considering the goods claimed by the holder I am satisfied that APR is indicative of the uses of the holder’s pharmaceutical preparations. The holder has claimed ‘pharmaceutical preparations that modulate the immune system’. This is likely to involve some manipulation of the acute phase response.  The holder has also claimed ‘pharmaceutical preparations, namely, cytokine inhibitory drugs’ and the information on file shows that cytokine drugs are used to terminate the acute-phase Response, or, APR. I believe that there is a clear link between the meaning of the medical acronym APR and the goods which are claimed by the holder.

17. I note that there are a substantial number of medical meanings which may be attached to the acronym APR. I am in agreement with the holder that in the specialized field of medicine, where many of the names and terms used are referred to by acronyms, that it is not reasonable to conclude that a general term which may have a related acronym, would be related to the same acronym or name in another area of medicine. However, that is not the case with APR. As already determined, APR is a medical acronym with a meaning that is directly relevant for the goods of interest to the holder.

18. The holder has also argued that a three letter acronym must be a well known acronym and that APR is not a well known acronym among members of the public. However, the relevant goods will be supplied on prescription and those prescribing the drugs will be well aware of the meaning of APR.  These are not pharmaceuticals which are self-selected by patients.

    ‘APR would be a well known term for the consumers of the goods claimed by the holder. These goods are pharmaceuticals which would only be available via prescriptions. Doctors or similar medical practitioners would therefore be ordering the pharmaceuticals for their patients and they are therefore the consumers’.

19. I find that a ground of rejection exists under subsection 41(5) with regards to all the goods claimed in specification of the holder’s trade mark. The holder has not provided evidence or reasons which are sufficient to overcome the ground for rejection. Therefore, the holder has not established that the applied for trade mark, APR, is capable of distinguishing its goods. I am satisfied there is ground for rejecting the IRDA pursuant to subsection 41(2).

    Decision

20. Regulation 17A.24 provides:

    17A.24Final decision on examination

    (1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

    (a)it is not in accordance with this Division; or

    (b)there are grounds for rejecting it.

    (2)The Registrar may accept the IRDA subject to conditions or limitations.

    (3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

    (a)it is not in accordance with this Division; or

    (b)there are grounds for rejecting it, in whole or in part.

21. I reject IRDA no.1465111 (International Registration No 1098651), APR, and hence extension of protection is refused.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    29 November 2012