Janssen Biotech, Inc v Celltrion, Inc

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.