Janssen Biotech, Inc v Celltrion, Inc

[2014] ATMO 121

TRADE MARKS ACT 1995

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

Re:Opposition by Janssen Biotech, Inc to extension of protection to international registration designating Australia 1536070 (International Registration No. 1143931) – 3 crescents around a double disk form 3 blade impeller – held by Celltrion, Inc.

Delegate:	Bianca Irgang
Representation:	Opponent: Gerard Skelly of Shelston IP Holder: David Stewart of Wrays
Decision:	2014 ATMO 121 Opposition under regs 17A.29 and 17A.34 – s 42(b), s 44 and s 60 considered - no ground of opposition established- protection extended.

Background

1. Celltrion, Inc. (‘the holder’) has applied for extension of protection of International Registration Designating Australia (‘IRDA’) 1536070 in class 5 of the International Classification of Goods and Services. Relevant details of the IRDA are set out below.

   Trade mark:   (‘rosette device’)

   IRDA:  1536070

   International Registration:             1143931

   Lodgement Date:  29 November 2012

   Convention Details:  1 June 2012
   4020120035257

   Republic of Korea

   Specification:  Class 5: Pharmaceutical preparations for the treatment of autoimmune diseases and autoimmune disorders; pharmaceutical preparations of therapeutic and monoclonal antibodies

2. The IRDA was advertised as accepted for possible protection in the Australian Official Journal of Trade Marks on 7 February 2013. Janssen Biotech, Inc (‘the opponent’) filed a Notice of Intention to Opposition to protection on 7 May 2013 followed by a statement of grounds and particulars on 4 June 2013. These two documents, taken together, constitute a notice of opposition (‘the Notice’)[1]. Thereafter the opponent and holder filed evidence as provided by the Trade Mark Regulations 1995 (‘the Regulations’).

   [1] Trade Marks Regulations 1995 (Cth) reg 17A.32.

3. I heard the matter in Canberra on 22 October 2014 as a delegate of the Registrar of Trade Marks. Gerard Skelly of Shelston IP appeared for the opponent. David Stewart of Wrays appeared on behalf of the holder.

   Grounds of Opposition

4. In terms of Regulations 17A.29 and 17A.31 the Notice nominated most of the grounds of opposition available under the Trade Marks Act 1995 (‘the Act’). The onus is upon the opponent to establish one or more of its grounds of opposition. Gyles J has referred to the standard of proof required in terms of a ‘balance of probabilities’.[2] His findings upon that issue, arrived at after a consideration of the relevant authorities, have been discussed with approval by Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks[3].

   [2] See Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599

   [3] [2009] FCA 891; (2009) 82 IPR 13 at para [22]-[27] See also Sports Warehouse Inc v Fry Consulting [2010] FCA 664; (2010) 87 IPR 300 at [36] to [39]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) at [16] to [32]. )

5. At the hearing the opponent advised that it was not formally withdrawing any of the grounds of opposition listed in the Notice but that it would provide submissions only on the grounds under sections 42, 44 and 60 of the Act. None of the evidence served and filed by the opponent appears to go to the other grounds in the Notice and for the sake of completeness I find that those grounds have not been established.

6. Therefore, the grounds remaining for my consideration are those under sections 42, 44 and 60 of the Act. Should the opponent establish one ground of opposition in relation to all of the goods specified in the IRDA, it has succeeded in its opposition and there is therefore no requirement for me to consider the other grounds of opposition.

   Evidence

7. The evidence consists of the following statutory declarations:

Declarant	Position	Date Made	Exhibits
Evidence in Support
Lucinda Warren	Business Unit Director, Immunology for Janssen-Cilag Pty Ltd	8.10.13	CW-1 to CW-13
Gerard James Skelly	Legal Practitioner and Consultant with Shelston IP	31.10.13	GJS-1 to GJS-6
Susan Jane Conner	Senior Staff Specialist in the Department of Gastroenterology & Hepatology at Liverpool Hospital	31.10.13	-
Associate Professor Jane Mary Andrews	Gastroenterologist and Head of Inflammatory Bowel Disease Service & Education in Department of Gastroenterology & Hepatology at the Royal Adelaide Hospital	15.11.13	-
Evidence in Answer
Associate Professor Evange Romas	Director of Rheumatology at St Vincent’s Hospital in Melbourne	8.4.14	ER-1
Kyung Ha Shin	Employed as the Intellectual Property Team Leader of the applicant	9.4.14	KS-1 to KS-10
Catherine Melanie Anita Toal	Lawyer at Wrays	10.4.14	CXT-1 to CXT-4

The opponent’s evidence

1. The declaration of Lucinda Warren (‘the Warren declaration’) states that Janssen-Cilag Pty Ltd is an affiliate of the opponent and that in her employment she has been personally involved in the marketing of pharmaceuticals under the REMICADE brand in Australia since 2006. The opponent has a registered trade mark no.  948177 the details of which are as follows:

   Trade mark:   (‘the REMICADE trade mark’)

   Trade Mark Registration:               948177  

   Lodgement Date:        25 March 2003

   Specification:  Class 5: Pharmaceutical preparations for the treatment of autoimmune diseases and autoimmune disorders

2. The Warren declaration states that the above REMICADE trade mark and the REMICADE logo, (‘the REMICADE Logo’), have been used in Australia by Janssen-Cilag Pty Ltd, with the authority of the opponent, since 2000. The majority of the opponent’s evidence demonstrates that the opponent uses the REMICADE trade mark very prominently on its packaging and in its information leaflets. However, there are also examples of the opponent using its REMICADE Logo solus (Exhibits CW-6 and CW-9 accompanying the Warren declaration).

3. Ms Warren declares that the REMICADE trade mark and the REMICADE Logo have been used by Janssen-Cilag Pty Ltd to brand its prescription pharmaceutical containing the active ingredient infliximab which is a monoclonal antibody and used in the treatment of inflammation associated with autoimmune conditions such as rheumatoid arthritis, ankylosing spondylitis, psoriatic arthritis, psoriasis, Crohn’s disease and ulcerative colitis (‘the REMICADE pharmaceutical’). Exhibit CW-3 is an extract from the Australian Register of Therapeutic Goods which explains the pharmacology and applications of the pharmaceutical to which the REMICADE trade mark and REMICADE Logo have been applied. The Warren declaration states that the REMICADE pharmaceutical is the leading brand of pharmaceutical used in the treatment of inflammation associated with autoimmune conditions.

4. Ms Warren attests that Janssen-Cilag Pty Ltd sells the REMICADE pharmaceutical to wholesale customers who in turn supply the hospital and retail pharmacy trade channels. The wholesale figures for the sale of the REMICADE pharmaceutical are considerable. The advertising figures are also reasonable given that the REMICADE pharmaceutical is a prescription drug and advertising and promoting the drug directly to consumers is not permitted.

   The holder’s evidence

5. The declaration of Kyung Ha Shin (the ‘Shin declaration’) states that the holder was founded in 2002 and has grown into a global biopharmaceutical company which develops, manufactures and distributes therapeutics based on recombinant DNA and molecular biology. According to the Shin declaration the holder offers alternative solutions for advanced therapeutics to provide affordable pharmaceuticals to patients with limited access to advanced therapeutics and who may otherwise be hindered by the high cost and relative shortage of antibody biopharmaceuticals.

6. Of particular interest to the present situation, the holder develops biosimilar pharmaceuticals. A biosimilar medication is a follow-on version of a biological medicine already registered according to the declaration of Catherin Toal (the ‘Toal declaration). Biosimilars are not generic medicines but, by their nature are complex, micro-heterogeneous mixtures of isoforms. In short, a biosimilar is a version of an already registered biological medication that has a demonstrable similarity in physiochemical, biological and immunological characteristics, efficacy and safety to the registered medication based upon comparability studies.

7. One of the holder’s products is a chimeric monoclonal antibody that acts as a tumour necrosis factor alpha (TNFἁ), inhibitor which the holder intends to supply in conjunction with the rosette device the subject of this opposed IRDA:

8. The holder’s word trade mark which will be used on this same biosimilar is REMSIMA (trade mark registration no. 1453513). The holder has obtained approval for human use of REMSIMA in 47 countries and is currently undergoing the process of obtaining approval for human use of REMSIMA in 22 other countries including Australia, New Zealand and Mexico. As such, the holder has not commenced selling its REMSIMA pharmaceutical within Australia. However, the holder has commenced use of the REMSIMA pharmaceutical along with the rosette device trade mark in each of the major western markets (Europe, the Asia Pacific region and the United States of America) and is continuing to promote its biosimilar product under the rosette device in these markets.

9. The Shin declaration states that the applicant adopted the rosette device trade mark with its two circles and six leaves in the dual colours of purple and olive green to represent the treatment of a total of eight diseases, both adult and paediatric, which the pharmaceutical REMSIMA targets.

   Grounds and onus

10. The opponent pursued all of its grounds of opposition and it bears the onus of establishing at least one of them, the relevant standard of proof being the civil standard of the balance of probabilities.[4]

    [4] Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599.

11. The opponent began by addressing section 44, so for convenience I will do likewise.

    Discussion

    Section 44 ground

    19.Only s 44(1) of the Act is relevant in this case and this is reproduced below:

    (1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

    (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

    (i) a trade mark registered by another person in respect of similar goods or closely related services; or
    (ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

    (b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For similar goods see subsection 14(1).
    Note 3:  For priority date see section 12.

12. To establish section 44 (1) of the Act the opponent must show all of the following:

    Øa trade mark (or trade marks), either registered or pending registration, in the name of a person other than the holder, and in relation to which the opposed trade mark is either substantially identical or deceptively similar;

    Øthe trade mark(s) in the name of the other person must be in respect of similar goods or closely related services; and

    Øthe priority date(s) of the trade mark(s) of the other person is (are) earlier than the priority date of the holder’s trade mark.

13. The opponent has specified the aforementioned trade mark registration no. 948177 in support of the section 44 ground of opposition. I note that the REMICADE trade mark has an earlier priority date than the opposed IRDA. I also note that the goods of interest to both the opponent and the holder are identical which has been agreed by both parties. Therefore, the key issue to be decided is if the holder’s rosette device is substantially identical with or deceptively similar to the opponent’s registration. The respective trade marks are depicted below:

Opponent’s trade mark Holder’s trade mark

1. It is clear the holder’s trade mark is not substantially identical with the opponent’s trade mark when compared side-by-side according to the test set out by Windeyer J. in Shell Company (Aust) Ltd v Esso Standard Oil (Aust) Ltd[5].

   [5] (1963) 109 CLR 407 at 414

2. Deceptive similarity is, however, defined by section 10 of the Act. The determination of deceptive similarity requires a comparison of the impression which persons of ordinary intelligence and memory would have upon recalling the opponent’s trade mark, to the impression that they would form from the applicant’s trade mark[6]. The likelihood of deception must be finite and non-trivial[7] and the trade marks are not to be considered side by side.

   [6] The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, per Windeyer J at 415 ‘Shell’

   [7] Registrar of Trade Marks v Woolworths Limited 45 IPR 411, per French J at [43]

3. According to the authorities[8] any consideration of whether trade marks are deceptively similar must take into account that consumers may have an imperfect recollection of a trade mark. As a general principle one needs to estimate the impression consumers are likely to form of each trade mark as a whole. Confusion may result if a trade mark incorporates the distinguishing features of another’s trade mark. Similarities in ideas are also a possible source of confusion although the fact that the trade marks have similar ideas is not conclusive in itself. In Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[9] the High Court stated:

   "But it is obvious that trademarks, especially word marks, could be quite unlike and yet convey the same idea of the superiority or some particular suitability of an article for the work it was intended to do. To refuse an application for registration on this ground would be to give the proprietor of a registered trademark a complete monopoly of all words conveying the same idea as his trademark. The fact that two marks convey the same idea is not sufficient in itself to create a deceptive resemblance between them, although this fact could be taken into account in deciding whether two marks which really looked alike or sounded alike were likely to deceive. As Lord Parker said in the passage cited, you must consider the nature and kind of customer who would be likely to buy the goods."

   [8] Clark v Sharp (1898) 15 RPC 141 at 146; Re Application by the Pianotist Co Ltd (1906) 23 RPC 774; Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641; Aristoc Ltd v Rysta Ltd (1943) 60 RPC 87; Cordova v Vick Chemical Co (1951) 68 RPC 103; Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536; Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411

   [9] [1952] HCA 15; (1952) 86 CLR 536.

4. French J in Registrar of Trade Marks v Woolworths Ltd[10] observed in relation to the expression “likely to deceive or cause confusion”:

   … The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” …

   [10] supra

5. The concepts ‘deceive’ and ‘cause confusion’ were considered in Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd[11] where it was stated:

   ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

   [11] (1979) RPC 410 at 423

6. The impression that the respective trade marks give is quite different. I do not believe that the use of the holder’s rosette device trade mark for the pharmaceutical goods in class 5 given the previous registration for the opponent’s REMICADE trade mark for the same goods in class 5 would result in a tangible danger of confusion or deception. In coming to this decision it is important that the trade marks are considered in their entirety -‘it is the whole mark which is the subject of the comparison with the registered mark[12].

   [12] Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182, 218 (Allsop J).

7. The opponent has argued that the holder’s rosette device trade mark is deceptively similar to the opponent’s REMICADE trade mark due to the fact that both trade marks share a circular device with spiral/propeller edges. While I do agree that the respective symbols are both circular with separate lines/propellers forming the outer curves, this is where all similarities end.

8. In comparing the trade marks it becomes apparent that there is a very significant difference between them, namely the striking and unique word REMICADE found in prominent position in the opponent’s trade mark. This word forms a very prominent part of the opponent’s composite trade mark and cannot be ignored – one must bear in mind that it is the trade marks as wholes that must be compared. There are also differences when the graphic devices are compared. While both devices are circular, the opponent’s REMICADE Logo is distinctly spiral whereas the holder’s rosette device is more obviously a central circle which is surrounded by three broken lines moving outwards and around the inner circle in the style of a propeller. This difference in the devices coupled with the very distinctive word REMICADE makes it unlikely that consumers will be confused between the opponent’s trade mark and the opposed IRDA.

9. As such I am not satisfied the parties’ trade marks are deceptively similar. The ground of opposition under section 44 is therefore not established.

   Section 60 Ground - Reputation in Australia

10. Section 60 of the Act provides:

    60. The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

    (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

    (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

    Note: For priority date see section 12.

11. Accordingly, section 60 contemplates confusion or deception between trade marks that are not necessarily deceptively similar. It is primarily concerned with the use of the rosette device in the face of the demonstrated reputation in Australia of another trade mark, and the likelihood of deception or confusion arising from that use. The Registrar’s delegate in Rogers Seller & Myhill v Reece Pty Ltd[13] qualified that general proposition, stating:

    Confusion cannot arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

    Additionally, Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[14] said that the reputation in the other trade mark should be:

    [O]ne of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.

    [13] [2010] ATMO 5; (2010) 85 IPR 647.

    [14] [2000] FCA 1587; (2000) 50 IPR1.

1. It is for me to determine therefore whether the opponent has established that before 1 June 2012 its trade mark were recognized by the public generally, or at least by a significant number of persons in the pharmaceutical market, and whether because of that reputation the use by the holder of its trade mark on the same pharmaceutical goods would be likely to deceive or cause the public confusion.

2. The opponent relies upon its use of its registered REMICADE trade mark and on the REMICADE Logo solus;

   to establish the ground under section 60. To establish reputation the opponent points to the goodwill associated with the opponent’s trade mark, allegedly demonstrated by the duration of its trade marks’ use, the volume of sales, the promotions and the consumer following.

3. The Warren declaration outlines the general history of the opponent and states that the REMICADE trade mark has been used in Australia since 2000. It is during that time the opponent’s REMICADE pharmaceutical has become a well-known pharmaceutical in the treatment of inflammation associated with autoimmune conditions. I also note that the declaration of Associate Professor Evange Romas states that he is very familiar with the opponent’s REMICADE pharmaceutical and the types of diseases that it treats as he was involved in the clinical trials for the development of the drug in the 1990s and has prescribed the drug to his patients. Mr Romas corroborates the Warren declaration in that the REMICADE pharmaceutical has been on the Australian market for a considerable time. Further to this, confidential exhibit CW-5 outlines the Australian wholesale sales revenue generated by the opponent from sales of its REMICADE pharmaceutical from 2007 until 2012. These figures are substantial and demonstrate significant growth each subsequent year.

4. However, when I consider the advertising figures supplied by the opponent in exhibit CW-13 it appears that the revenue generated is not in proportion to the more modest amounts listed as advertising expenditure. I once again note that being a prescription drug, the opponent is not permitted to advertise or promote the REMICADE pharmaceutical directly to consumers. Instead, the opponent markets its goods to medical professionals through presentations at seminars and exhibitions, articles published in professional journals, brochures and pamphlets provided to medical professionals as well as promotional merchandise and sponsorship of events (exhibits CW-6 to CW-12). It is clear that the opponent has engaged in a considerable level of advertising given the restrictions on advertising it faces and that this advertising has likely aided in the growing sales of its REMICADE pharmaceutical as the years have progressed.

5. I am satisfied from the evidence that the opponent does have a very considerable reputation in its REMICADE pharmaceutical within the Australian marketplace in the highly specialised field of prescription pharmaceuticals to treat inflammation associated with autoimmune conditions. However, I do not believe that the opponent’s reputation in the REMICADE trade mark or REMICADE Logo extends beyond that very narrow market.

6. Mr Stewart, representative for the holder, asserts that while the opponent has a reputation in its REMICADE pharmaceutical, the opponent does not have a reputation in its REMICADE Logo as it is predominantly used in conjunction with the word REMICADE. However, I am not persuaded by this reasoning.

7. There is little doubt from the evidence before me that the opponent has used its REMICADE Logo as a trade mark in its own right, which is why it does appear in different positions in pamphlets and on information leaflets (exhibits CW-6 and CW-9). In relation to the argument that the appearance of the opponent’s REMICADE Logo used in conjunction with particular words does nothing to assist a reputation in the REMICADE Logo, I turn to Woolworths Limited v BP p.l.c[15] where the Hearing Officer stated:

   Would anyone seriously contend that the word NIKE alone is not used as a trade mark because it is usually accompanied by a “swoosh” logo? No such concern appears in Campomar Sociedad Limitada v Nike International Ltd.[16] Similarly, to take some well known Australian examples, it is clear that HOLDEN and COMMODORE are two trade marks, as are FORD and FALCON, and QANTAS and a flying kangaroo logo, despite their common usage as composite trade marks.

   In Peter Bodum A/S v DKSH Australia Pty Ltd,[17] the Full Federal Court considered whether a reputation existed in the features or shape of a particular coffee plunger product. Although this was a case for passing off and misleading conduct rather than trade mark infringement, it is comparable to the present case insofar as the Full Court was required to consider the respective reputations held (on the one hand) by the features or shape of the coffee plunger product and (on the other hand) by the BODUM brand applied to that product. The Full Court explicitly rejected the suggestion that the appellant’s reputation subsisted simply in the BODUM brand name, or alternatively, that in the absence of the BODUM brand name there was no independent reputation in the features or shape of that product.[18]

   [15] [2013] ATMO 61 (8 August 2013)

   [16] (2002) 202 CLR 45.

   [17] (2011) 92 IPR 222.

   [18] Peter Bodum A/S v DKSH Australia Pty Ltd, supra at 259 [186] per Greenwood J, Tracey J agreeing at [276] [272].

8. I believe that the current situation is very similar to the above although I do acknowledge that the REMICADE Logo is not as well known as those trade marks mentioned above. Nonetheless, it is clear a reputation can exist in a trade mark that is used in conjunction with another. I do not believe that the opponent’s reputation subsisted only in the REMICADE word and that there is no reputation in the REMICADE Logo used in all of its promotional activities and on all of its REMICADE pharmaceuticals. I believe that the opponent does have a reputation in its REMICADE Logo and that it is acting as a trade mark in its own right. However it needs to be determined if, given this reputation in Australia, use of the opposed IRDA would be likely to deceive or cause confusion.

9. In respect of the possibility of confusion, Mr Skelly, counsel for the opponent submitted that:

   ·The graphic devices of the opponent’s trade mark and the holder’s rosette device are very similar

   ·The holder uses its rosette device in combination with the word REMSIMA and that this will only increase the level of confusion between the respective trade marks

   ·The holder has intentionally adopted a strategy of, not just intending to market a biosimilar version of the opponent’s REMICADE pharmaceutical, but adopted branding which is clearly intended to get as close as possible to the opponent’s branding because the opponent is the market leader

10. I will deal with Mr Skelly’s second and third points by saying that I am to consider whether the opponent is able to establish a ground of opposition under section 60 against the holder’s rosette device as applied for. I am not to be overly influenced by the evidence that the disputing parties use their trade marks in ways that, at the moment, may be quite different and may involve additional trade marks. I am to consider the trade mark for which protection is sought and any of the modes of business that would be within the scope of the registration, should it be granted in the terms presently sought. The points made by the opponent regarding the holder’s branding strategy and its decision to adopt such a branding strategy have not been supported in the opponent’s evidence and in the absence of evidence, they cannot be established.

11. In regards to Mr Skelly’s first point, while there is no longer a requirement that the IRDA be at least deceptively similar to the opponent’s trade marks, it is well established that the aspects of similarity between the trade marks feed into the likelihood of deception of confusion occurring. In this case I have already determined that the opposed IRDA is not deceptively similar to the opponent’s registered REMICADE trade mark for the purposes of section 44 but the trade marks to be considered under section 60 are as follows:

Opponent’s trade marks Holder’s trade mark

1. In considering the respective trade marks it becomes apparent that they do share some similarities, particularly when comparing the REMICADE Logo against the rosette device. However, are these similarities between the respective trade marks in light of the opponent’s reputation sufficient to establish a ground of opposition under section 60? I do not believe they are. This is because the opponent and the holder will both be supplying highly specialised pharmaceuticals which medical professionals will prescribe to their patients.

2. The declarations of Susan Conner and Jane Andrews attest that confusion can arise amongst pharmacists, nursing staff and patients when drug names, logos and packaging are similar. In particular, Ms Andrew states that such confusion has been known to lead to dispensing errors and also to medication errors at the time of administration. She also states that in her experience patients do not always recall the drug name and may describe what they are currently taking according to their recollection of what is on the packaging. While I do believe that there may be a potential for confusion to occur in very limited cases when it comes to dispensing pharmaceuticals, I do not believe that confusion is likely to occur in this case. I take guidance from Kowa Company Ltd v N V Organon[19] where Lander J stated at 171:

   The decision to prescribe pharmaceuticals is invariably that of the treating medical practitioner. It is the medical practitioner who determines how his or her patients will be treated and whether they will be treated with a particular pharmaceutical. The patient does not make any real contribution to the decision about which pharmaceutical is to be prescribed.

   In those circumstances, in considering whether there is likely to be any deception or confusion at the point of obtaining the pharmaceutical, regard must be had to the risk of the doctor misprescribing one pharmaceutical for the other.

   There is an attendant risk, of course, as the respondent addressed, that the pharmacist could mistakenly dispense one product for the other. It must be remembered, however, that the pharmacist is the recipient of the prescription. He or she plays no part in the prescribing of the pharmaceutical. The pharmacist’s obligation is to dispense the pharmaceutical…

   Dr Stone and Dr Baro both gave evidence that they would be unlikely to confuse the names of the two drugs when prescribing medication. Dr Stone said that he takes extreme care in prescribing drugs. He deposed that he understands that small differences in a product name are likely to refer to a different pharmaceutical. Dr Stone offered examples of pharmaceutical products bearing similar names that are available for prescription in Australia, including: ZINNAT and ZINVIT; AVANZA and AVANDIA; ANAPROX, AROPAX and APRINOX. He stated that although those names are similar, he immediately recognises the differences between them and the respective pharmaceuticals to which they apply. He said that he recognises that the name LIVIAL is different from the name LIVALO and that the common LIV prefix does not lead him to assume that the pharmaceuticals sold under those names are related in any way...

   …there are a number of drugs presently on sale in Australia which have similar names. They would not assume that because those drugs or pharmaceutical preparations had similar names that they were manufactured or distributed by the one company. Because of the similarity of names in the pharmaceutical industry, medical practitioners need to take care in prescribing those drugs. I accept their evidence that medical practitioners take especial care in prescribing drugs because they are commonly faced with similar sounding or appearing names. … I find, therefore, that it is not uncommon in the pharmaceutical industry in Australia for drugs to bear similar sounding and looking names. It is not usual for those dealing with those drugs to assume that because drugs have similar sounding names they are either manufactured or distributed by the one company. Because drugs do have similar sounding names, special care must be taken by those who have the responsibility for prescribing and, indeed, dispensing drugs to ensure that the right drug is addressed…

   In my opinion, on the evidence which has been adduced by the applicant in its case and in its cross-examination, prescription drugs are not likely to be confused with each other even when they are sold under a mark which is similar sounding or looking to a mark of another drug. Medical practitioners are unlikely to confuse the drugs. There is no evidence that pharmacists are likely to confuse them. I find that pharmacists are also unlikely to confuse them.

   [19] [2005] FCA 1282 (13 September 2005)

3. While the above case deals with word trade marks rather than graphic devices as is the case here, I think that the reasoning behind prescription drugs and the care with which they are prescribed is relevant to the present case. The pharmaceuticals of interest to both parties are prescription drugs which are likely to be administered intravenously by a trained professional. It is likely that a medical professional would take extreme care when administering such a drug and that cases of confusion are likely to be rare.

4. I do note that the goods specification of both parties may extend beyond prescription drugs. However, the opponent has not demonstrated that it has a reputation in its REMICADE pharmaceutical beyond a very small and select market. This reputation does not extend into the general Australian marketplace. I believe that it is highly unlikely that a consumer with knowledge of the opponent’s REMICADE trade mark or REMICADE Logo would become confused or be caused to wonder if there was a connection between the opponent’s high expense prescription pharmaceutical and any potential red krill oil, for example, labelled with the holder’s rosette device which could be found on the shelf in a chemist or supermarket.

5. I do not believe that the holder’s use of its rosette device would be likely to deceive or cause confusion in the marketplace even if that use is in relation to the same goods and directed at the same consumers. I am not satisfied that it is likely consumers would become confused and be caused to wonder whether there was a connection between the opponent’s goods and those goods of the holder bearing its rosette device trade mark. I am not satisfied that the holder’s use of its rosette device trade mark will result in any significant degree of deception. The opponent has not established the section 60 ground of opposition.

   Section 42(b) – Contrary to Law

6. Section 42 of the Act provides:

   An application for the registration of a trade mark must be rejected if:
                    (a) the trade mark contains or consists of scandalous matter; or
                    (b) its use would be contrary to law.

7. The opponent’s attorney submitted that use of the applicant’s trade mark for the relevant goods would breach Sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribes misleading or deceptive conduct or the making of false or misleading representations.

8. As I have found that the use of the opposed trade mark is not, at a minimum, likely to “confuse” under sections 44(1) or 60, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established its ground of opposition under section 42(b).

   Decision

9. Regulation 17A.34N provides:

   17A.34NDecision on opposition

   (1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

   (a)to refuse protection in respect of all of the goods or services listed in the IRDA; or

   (b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

   having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

   (2)The Registrar must tell the International Bureau of his or her decision.

10. I find that the opponent has not established any of its grounds of opposition. Accordingly, I direct that protection of IRDA 1536070 be extended in respect of all the listed goods

    Costs

11. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs, according to the official scale set out in Schedule 8 of the Regulations against the opponent.

    Bianca Irgang

    Hearing Officer

    Trade Marks Hearings

    19 December 2014