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

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
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.
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
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]. )
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…

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.

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Details

Case: [2014] ATMO 121
Decision Date: 19 December 2014

CaseChat Overview and Summary

Janssen Biotech, Inc (the opponent) opposed the extension of protection of International Registration Application (IRDA) 1536070, which included the trade mark REMSIMA and a rosette device, filed by Celltrion, Inc (the applicant). The dispute concerned the applicant's intention to use the REMSIMA trade mark and rosette device in Australia for a biosimilar pharmaceutical, a follow-on version of a biological medicine. The opponent, which sells the REMICADE pharmaceutical, argued that the use of the applicant's trade mark and device would likely cause confusion and mislead consumers, thereby infringing its rights.

The court was required to determine whether the applicant's proposed use of the REMSIMA trade mark and rosette device infringed the opponent's rights under various provisions of Australian trade mark law, specifically sections 44(1) and 60 of the *Trade Marks Act 1995* (Cth), and sections 29 and 42(b) of the *Australian Consumer Law*. The onus was on the opponent to establish at least one of its grounds of opposition on the balance of probabilities.

The Hearing Officer found that the opponent had not established any of its grounds of opposition. The evidence did not demonstrate that the use of the opposed trade mark was likely to cause confusion under sections 44(1) or 60. Consequently, the Hearing Officer concluded that the use was not likely to mislead or deceive, nor would it amount to a false representation under section 29 of the *Australian Consumer Law*. Therefore, the ground of opposition under section 42(b) was also not established.

Accordingly, the Hearing Officer directed that protection of IRDA 1536070 be extended in respect of all the listed goods and services. Costs were awarded against the opponent according to the official scale.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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 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. 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. 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: 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. 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 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.

Decision

Reasons for decision

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 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. 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 goodsCosts 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 IrgangHearing OfficerTrade Marks Hearings19 December 2014

Ratio Decidendi

Legal Principle Established

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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.