Celgene Corporation

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.