Juno Pharmaceuticals Inc v Juno Therapeutics Inc - [2017] ATMO 160

TRADE MARKS ACT 1995

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

Re:Opposition by Juno Pharmaceuticals Inc to registration of trade mark application 1646293 (5, 35 & 42) (IR 1215648) JUNO THERAPEUTICS in the name of Juno Therapeutics, Inc

Delegate:	Michael Kirov
Representation:	Opponent: Andrew Sykes of Counsel, instructed by Ellen Reid of Jones Tulloch Pharmaceutical Consultants & Patent Attorneys Holder: Sonia Stewart of Counsel, instructed by FB Rice Patent & Trade Mark Attorneys
Decision:	2017 ATMO 160 Opposition under s 52 of the Trade Marks Act 1995: requests to add an opposition ground (reg. 17A.34G/reg. 5.12) and to rely on further information (reg. 21.19) considered - s 60 of the Act considered –– reputation of Opponent’s trade mark insufficient to enliven s 60 – opposition not established.

Background

Trade mark application number 1646293 is the Australian designation of an application under the Madrid Protocol by Juno Therapeutics, Inc (“the Holder”) to extend protection of the trade mark subject of its international registration 1215648 to Australia (“the IRDA”). After examining the IRDA, IP Australia advertised on 16 October 2014 its intention to extend protection for goods and services in Classes 5, 35 and 42 (“the Designated Goods and Services”), as detailed below:

Application No: 1646293

Priority Date: 3 December 2013 (Based on U.S. application 86134320)

Goods:Class 5: Pharmaceutical preparations for the treatment of cancer
Services:Class 35: Business services, namely, commercialization of cellular immunotherapies for the treatment of cancer
Class 42:Research and development of cellular immunotherapies for the treatment of cancer; research and development of pharmaceuticals for the treatment of cancer

Trade Mark: JUNO THERAPEUTICS (“the Opposed Mark”)

On 15 December 2014 Juno Pharmaceuticals Inc (“the Opponent”) filed a formal Notice of Intention to Oppose extension of protection pursuant to reg. 17A.33 of the Trade Marks Regulations 1995 (“the Regulations”). I mention that s 189A of the Act allows for regulations to be made concerning IRDAs. The regulations dealing with opposition to extension of protection of IRDAs are found in Part 17A and are essentially identical to those found in Part 5 of the Regulations dealing with opposition to registration of local applications. In this decision I will refer primarily to the Part 17A regulations, but will for convenience also identify the generally more familiar corresponding Part 5 regulation.
On 15 January 2015 the Opponent filed a Statement of Grounds and Particulars (“SGP”) specifying a single ground of opposition corresponding to s 60 of the Act. The Holder filed a Notice of Intention to Defend the IRDA on 27 February 2015.
The parties then jointly requested and were granted two “cooling-off” periods of six months (that is 12 months in total) pursuant to reg. 17A34L/reg. 5.16. Presumably the requests were made so that the possibility of settlement might be explored but this proved elusive. The parties then filed the evidence described below.
For their evidence the parties filed the following declarations, made pursuant to the Act and reg. 21.6 of the Regulations in the Holder’s case and the Statutory Declarations Act 1959 in the case of the Opponent:

Evidence in Support

▪ George Katsanos made 1 September 2016, with Exhibits GK-1 to GK-14 (“Katsanos”)

Evidence in Answer

▪ James J. MacDonald made 6 December 2016, with Annexures JT-A to JT-F (“MacDonald”)

Evidence in Reply

▪ Paul Meulblok made 9 February 2017, with Exhibits PM2-1 to PM2-11 (“Meulblok 1”)

IP Australia subsequently notified the parties that a hearing had been scheduled for 22 September 2017 in Canberra. On 14 July 2017, being shortly after that notification, the Holder sought to file additional evidence. As the appointed Hearing Officer delegated by the Registrar to hear the matter, that request (along with a copy of the proposed additional evidence) was referred to me for determination. After reviewing the material I wrote to both parties’ representatives via email on 18 July informing them that the Holder’s request was refused. I explained that, following amendments to the Act and Regulations which came into force on 15 April 2013, the filing of further evidence was no longer possible, adding:
In particular former reg. 5.15(1)(b), (which contemplated applications to file “further evidence” in s 52 oppositions), and former reg.5.15(2), (which gave the Registrar discretion to grant such an application), were repealed. There are now no corresponding provisions, (or Registrar’s discretion), in Part 5 [or Part 17A] of the Regulations allowing for the filing of further evidence.
That said, I note that the sole ground nominated in the Opponent’s Statement of Grounds and Particulars is based on s 60 of the Act. Having read all of the parties’ properly filed evidence this morning, I do not believe that any of the material contained in the proposed further evidence would on the face of it be relevant to my decision on this ground in any event.
The Holder did not challenge that determination. However, on 27 July Debra Tulloch, a partner with the Opponent’s attorneys, wrote to the Registrar seeking to amend the SGP by adding a ground corresponding to s 58 of the Act (“the s 58 Request”). The s 58 Request was supported by a Statutory Declaration made that day by Ellen Reid, a Registered Trade Mark Attorney with the same firm (“Reid 1”). After reviewing the s 58 Request and Reid 1 I wrote to the Opponent’s attorneys on the following Monday, 31 July, (via email, with copy to the Holder’s attorneys) informing them that the request was refused. Because it sets out the basis for the s 58 Request and is directly relevant to the discussion which follows, my letter of 31 July is reproduced in full below:
I refer to your request dated 27 July 2017 to add an additional ground (s 58) to your client’s Statement of Grounds and Particulars (“the [s 58] Request”), which has just been brought to my attention.
Copies of the [s 58] Request and of the supporting Statutory Declaration by Ellen Reid are attached in case the [Holder’s] attorneys are not yet aware of them.
I regret to inform you that the [s 58] Request is refused. My reasons follow.
In her declaration Dr Reid indicates the [s 58] Request is made pursuant to reg. 5.12 [reg. 17A.34G] of the Trade Marks Regulations 1995, which is set out below:
Amendment of statement of grounds and particulars
(1) An opponent may request the Registrar to amend the statement of grounds and particulars to:
(a) correct an error or omission in the grounds of opposition or the facts and circumstances forming the basis for the grounds; or
(b) amend a ground of opposition; or
(c) add a new ground of opposition; or
(d) to amend the facts and circumstances forming the basis for the grounds.
(2) The Registrar may grant the request on terms that the Registrar considers appropriate.
(3) However, the Registrar may grant a request to:
(a) amend a ground of opposition; or
(b) add a new ground of opposition;
only if the Registrar is satisfied that the amendment or addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.
(4) If the Registrar grants the request, the Registrar must give a copy of the amended statement to the applicant.
The [s 58] Request clearly falls within reg. 5.12(1)(c) [reg. 17A.34G(1)(c)] in particular. Reg. 5.12(1)(c) is however subject to reg. 5.12(3)(b) [reg. 17A.34G(3)(b)], which precludes the Registrar from granting such a request unless satisfied that the “addition relates to information of which the opponent could not reasonably have been aware at the time of filing the statement.”
Dr Reid declares that the relevant “information” of which the opponent could not reasonably have been aware at that time was that two decisions of the Full Federal Court, (Accor Australia & New Zealand Hospitality v Liv Pty Ltd [2017] FCAFC 56 (“Accor”) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (“Pham”)), would subsequently issue in which “the approach to the test for substantial identity has changed.” I do not agree with this understanding of the two decisions.
Where the Court in Accor disagreed with the primary judge was not over the relevant test for substantial identity, but rather over which marks on the facts before them needed to be compared. Whereas one party was arguing that use of a “composite” mark featuring the distinctive words “HARBOUR LIGHTS” along with other material was not use of those words per se, the Court rejected this and then went on (at [233]) to confirm and apply the standard test for assessing substantial identity, namely “whether a total impression of similarity emerges from a [side by side] comparison.”
This long-standing test, again affirmed at first instance in Pham ([2016] FCA 1406 at [15]) and by the Full Court in the appeal (at [50]), is usually summarised in the well known words of Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 (“Shell”) at 414:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential feature of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.
At [51] the Full Court in Pham unequivocally stated:
There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in Shell at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.
In her supporting declaration Dr Reid quotes in full the Court’s next paragraph at [51], where the Court explicitly rejects the submission by the Respondent in Pham that a new test for determining substantial identity was being posited. Despite the Court’s words, Dr Reid refers thereafter to a “new test”, declaring that, “In Pham, as a result of applying the ‘new test’, the trial judge’s decision on substantial identity was overturned…” Nothing could be further from what the Full Court actually said. As mentioned it agreed with the trial judge’s statement of the applicable test as put by Windeyer J, but it overturned the earlier decision because that test was in its view incorrectly applied, stating at [55]:
The primary judge’s analysis, in contrast to the description of the reasoning of the Registrar’s delegate, does not refer to the essential elements of the marks or assess the relative importance of the differences and similarities having regard to those essential elements. The process of evaluation thereby miscarried. It is thus necessary that this Court carry out its own evaluation.
To conclude, I do not agree that the test for substantial identity has changed in any significant manner. I am therefore not “satisfied that the [s 58 Request] relates to information of which the opponent could not reasonably have been aware at the time of filing the [Statement of Grounds and Particulars]” and reg. 5.12(3)(b) [reg. 17A.34G(3)(b)] accordingly precludes the Registrar from granting the [s 58] Request.
On 4 August 2017 Ms Tulloch again wrote to the Registrar, this time requesting that “further information that has not been filed in evidence in respect of our opposition” be considered (“the FI Request”). The FI Request was again supported by a Statutory Declaration made that day by Dr Reid (“Reid 2”) and the further information itself was contained in a very brief accompanying Statutory Declaration (also made that day) by Paul Meulblok (“Meulblok 2).
Mr Meulblok is both Chief Financial Officer and Chief Information Officer of an Australian company named Juno Pharmaceuticals Pty Ltd (“JP Australia”), which he says is “an authorised user of the trade marks in relation to goods and services under the control of [the Opponent]”. He describes the “further information” as follows:
3. On 26 July 2017, I was asked by [Dr Reid] to search again for any emails or letterheads addressed to Australian recipients (e.g. the “.au” email address) promoting the future sales of any pharmaceuticals, which are dated before 3 December 2013. I responded on 27 July 2017 with Annexure PM2-1. Annexure PM2-1 is an email dated 14 August 2013 from my Australian email address ([email protected]) to Shaun Smith ([email protected]) of Central Healthcare Services Pty Ltd, an Australian company located in Dandenong South, VIC, Australia. The email discusses an invoice for a pharmaceutical product, tranexamic acid. The email also discusses a customer who has agreed to a further invoice being raised in preparation for the goods being received.
I note Mr Meulblok apparently discovered the email and purchase order forming Annexure PM2-1 after Dr Reid requested him on 26 July “to search again for any emails or letterheads… dated before [the Relevant Date].” His emailed response was sent at 8.30 am on 27 July and the s 58 Request was then made later that day. There is however no explanation as to why what is claimed to be documented evidence of the Opponent’s first actual use of JUNO PHARMACEUTICALS as a trade mark, being the first ever purchase order JP Australia apparently raised (bearing the text “Order # 1”), was not identified earlier and included in Meulblok 1, which was declared in February 2017 and constitutes the Opponent’s evidence in reply. What does seem clear, nevertheless, is that while the decisions of the Full Court(s) in Accor and Pham were handed down on 7 April and 26 May 2017 respectively, the Opponent’s attorneys did not became aware of their claimed significance for a possible s 58 ground until late July (following my letter of 18 July to the Holder’s attorneys reproduced at paragraph 6 above) and this was what I understand prompted the late, second search for possible supporting evidence.
Be that as it may, I would just add that for a number of reasons which it is unnecessary to discuss in detail here the email and purchase order exhibited with Meulblok 2 do not in my view actually show relevant use of JUNO PHARMACEUTICALS as a trade mark.[1] Accordingly my taking these documents into account would not have assisted the Opponent significantly in establishing the s 58 ground of opposition sought in any event.
[1] These reasons include, inter alia, the fact that the purchase order from JP Australia is in Euros and is addressed to a pharmaceutical manufacturer or supplier in Hyderabad, India. The Indian company is asked to deliver the goods (which are described generically as “tranexamic acid” and “water for injection”) directly to a company in South Australia “to be used in a clinical trial” and “preferably” unlabelled, but “If labelling is required then please include minimal text on easy to remove labels if possible.” Additionally, as Ms Stewart pointed out at the hearing, it would in any event have been illegal for the Opponent to, as Mr Meulblok puts it, “promote the future sale” of transexamic acid in Australia before the product had been approved by the Therapeutic Goods Administration. Exhibit GK-2 to Katsanos indicates that such approval was not granted until February 2015.
After reviewing the FI Request and declarations I wrote to the Opponent’s attorneys the following Monday, 7 August, (via email, with copy to the Holder’s attorneys) informing them that I was inclined to refuse the request, but would hear the parties’ submissions on the issue at the commencement of the hearing on 22 September. Again, because it sets out the basis for the FI Request and is relevant to the discussion which follows, my letter of 7 August is reproduced in full below:
I refer to your request dated 4 August 2017 for the Registrar to consider further information (“the FI”) in your client’s opposition to application 1646293 (“the FI Request”).
Copies of the FI Request, of the supporting Statutory Declaration made on 4 August 2017 by Ellen Reid and of the Statutory Declaration of Paul Meulblok also made on 4 August 2017 (containing the FI) are attached in case the [Holder’s] attorneys have not yet seen them.
In her declaration Dr Reid indicates the FI Request is made pursuant to reg. 21.19 of the Trade Marks Regulations 1995, which is set out below:
Registrar may use information available
(1) If:
(a) information that is available to the Registrar is relevant to proceedings before the Registrar; and
(b) the Registrar has reason to believe that the information is not known to a party to the proceedings; and
(c) the Registrar proposes to take the information into account in making a decision in the proceedings;
before making the decision the Registrar must:
(d) provide the information to the party; and
(e) give the party a reasonable opportunity to make representations about the information.
(2) For the purposes of paragraph (1)(e), the representations may be made in writing or at a hearing or by such other means as the Registrar reasonably allows.
Dr Reid says that the FI “is of high probative value and is likely to significantly affect the outcome of the opposition.” She nevertheless goes on to say of the FI that, “Such a small amount of evidence would add little to the existing ground of opposition, being under s 60, but would add much more to the new ground of opposition under s 58 that does not require a reputation to be established.”
This assumes that your earlier request of 27 July 2017 to add a s 58 ground was granted. However in my email to you on 31 July last I refused that request, noting that reg. 5.12(3)(b) [reg. 17A.34G(3)(b)] precludes the Registrar from doing so unless “satisfied that the [request to add a ground] relates to information of which the opponent could not reasonably have been aware at the time of filing the [Statement of Grounds and Particulars].” For the reasons set out in my earlier email I do not agree that the decisions of the Federal Court this year in Accor and Pham relevantly alter the manner in which substantial identity should be assessed as between word marks such as those in the present opposition and accordingly I was not so satisfied. In such circumstances the Registrar has no discretion to agree to add a ground of opposition.
Given that the FI would apparently add little to the s 60 ground of opposition I am not at this point inclined to take it into account in the absence of the [Holder’s] consent. Nevertheless I propose hearing both parties’ submissions on the issue at the commencement of the hearing on 22 September. Should I then determine to take the FI into account I will allow the [Holder] 14 days to file any material in response it wishes me to consider. There would not thereafter be any right of reply from the Opponent.
On 18 August 2017 Dr Reid wrote to the Registrar in relation to my refusal of 31 July (of the s 58 Request) and provisional refusal of 7 August (of the FI Request). As to the former, the letter stated, inter alia, “We respectfully disagree with the reasons presented by Mr Michael Kirov and request that the Registrar favorably reconsider the refusal…” Referring to the reasons I gave in my letter of 31 July, Dr Reid’s letter then continued:
Our comments on the refusal are as follows:
The test set out in Shell refers to “essential features”, but it does not prioritise the consideration of essential features over and above the “total impression of resemblance or dissimilarity”. Further Shell does not go so far as to refer to the “essential features” as dominant. Rather Shell merely points out that for the side-by-side comparison you must have regard to similarities and differences, essential feature and “the total impression of resemblance or dissimilarity that emerges from the comparison”.
The reasoning from Shell does not go so far as to say we discount words like “THERAPEUTICS” and “PHARMACEUTICALS”. Rather, the interpretation of Shell over the years has been that the difference in two such words would be seen to effect the “total impression” of dissimilarity so much that you would not find them substantially identical even whilst noting that JUNO is the “essential feature”. The traditional view of what was “substantially identical” was that two trade marks will be substantially identical if they are identical or differ only in minor aspects that have little or no significance on their identity. For example, if they differ only by way of the addition or subtraction of a space, or by way of singular and plural forms or possibly if by way of a single letter, or by way of visual aspects that do not change the fact they are phonetically identical. However, these examples are quite different to the whole word differences between JUNO PHARMACEUTICALS and JUNO THERAPEUTICS. Therefore, at the time of filing the Statement of Grounds and Particulars (15 January 2015) Section 58 was not included.
The decision of the Full Court of the Federal Court in Pham when considering substantial identity, the Court has observed the “cognitive cues” or “dominant cognitive cues” in the marks to be assessed. [sic] In doing so the Court has, in essence, disregarded differences in the trade marks that may be regarded as generic or descriptive elements. In Pham the Court stated at 52:
We do not accept IR’s submission that ICI was positing a new and unprincipled test for determining substantial identity. The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark. [Ms Reid’s emphasis retained]
Despite stating that this was not a “new and unprincipled test”, it is very clear, that this is a new principle applied to the process of applying the side-by-side comparison test. Although the test set out in Shell refers to “essential features” it does not prioritise the consideration of such features over and above the “total impression of resemblance or dissimilarity”. However, the Full Federal Court in Pham has now done exactly that in noting “dominant” cognitive cues and discounting “mere descriptive elements”. No such prioritisation occurred in Shell.
In Pham, as a result of applying the test in the new manner set out therein, the following two marks were found to be substantially identical:
As can be seen, “Clinical Imaging” and “radiology” are both visually and phonically completely different. Hence, there is a total impression of dissimilarity in a side-by-side comparison. However, “Clinical Imaging” and “radiology” are descriptive, unlike INSIGHT and the circle devices.
Following the same reasoning PHARMACEUTICALS and THERAPEUTICS are both visually and phonically completely different, but also both completely descriptive. However, JUNO is identical in both JUNO PHARMACEUTICALS and JUNO THERAPEUTICS and clearly the “dominant cognitive cue” in the mind of consumers. Therefore following the reasoning in Pham JUNO PHARMACEUTICALS and JUNO THERAPEUTICS may now be considered to be substantially identical.
We therefore maintain the position that Section 58 was not reasonably available to the opponent at the time of filing the Statement of Grounds and Particulars. As such, the amendment relates to information, which the opponent could not have been aware of at the time of filing and should be allowed under Regulation 5.12 of the Trade Marks Regulations 1995.

As to my refusal of 7 August of the FI Request, Dr Reid’s letter noted it was contingent upon my earlier refusal of the s 58 Request and her letter concluded:
We respectfully request favourable reconsideration of both refusals. In the event that our reasons are not considered to be persuasive, we request an opportunity to be heard on both matters (the Request to Amend and the FI Request). Specifically, we request to be heard on both matters at the commencement of the Hearing on 22 September 2017.
I responded to Dr Reid’s letter by email (copied to the Holder’s attorneys) on 6 September. Insofar as relevant to the present matter, my letter is reproduced below:
I refer to your letter dated 18 August 2017 responding to my letters of 31 July and 7 August last.
I firstly apologise for this late acknowledgment, your letter only having come to my attention by chance late yesterday afternoon. I was alerted to its existence by Ms Gun of FB Rice, (who had noticed reference to it in the publicly available “History” of application 1646293 on [the Trade Marks Register]), who telephoned enquiring as to what the correspondence referred to was.
As discussed with Ms Gun yesterday a copy of the letter, which FB Rice has not yet seen, is now attached. May I ask, Dr Reid, that you always in future send copies of any correspondence such as this in the lead up to hearing directly to me via email, with a copy to the other party.
Turning to the letter itself, I regret that I do not find its contents persuasive and at this stage, accordingly, my inclination is to confirm what I said in my letters of 31 July and 7 August. However, as requested I do agree to hear both parties’ submissions on the two issues (that is, the request to add a s 58 ground and the reg. 21.19 request) at the commencement of the hearing on 22 September next and will reserve my final decision until after that.
I heard the matter as a delegate of the Registrar of Trade Marks as scheduled on 22 September 2017 in Canberra. The Holder was represented by Sonia Stewart of Counsel, instructed by the firm FB Rice. Andrew Sykes of Counsel, instructed by Dr Reid of Jones Tulloch, appeared for the Opponent. Counsels’ submissions were supplemented by written submissions exchanged in accordance with my directions prior to the hearing.

Determination of the s 58 Request and the FI Request

As foreshadowed, the hearing commenced with Counsels’ submissions on whether the SGP might be amended by addition of a s 58 ground of opposition. Mr Sykes’ submissions on the issue were not, in my estimation, significantly different from those of Dr Reid described in paragraphs 7 and 13 above, but for the sake of completeness I set out his essential points below (with his original footnotes reproduced or redacted in square brackets):
6. In order for the s 58 ground of opposition to be added to the [SGP] the Opponent ought to have been satisfied that JUNO PHARMACEUTICALS and JUNO THERAPEUTICS were substantially identical as this is an essential threshold requirement to make out this ground of opposition.
7. The Opponent’s reason for seeking to add this ground of opposition is set out in [Reid 1].
8. In short, the reason is that at the time of filing the [SGP] on 15 January 2015 the Opponent’s Attorney’s [sic] were of the informed view that JUNO PHARMACEUTICALS and JUNO THERAPEUTICS were not substantially identical [Reid 1 at paragraph 6]. However, in July 2017 the Opponent’s Attorney’s [sic] were made aware of recent Full Federal Court authority that, in its opinion, changed the approach to apply the test of whether two marks are substantially identical [Reid 1 at paragraph 15]. This change in approach means that in comparing JUNO PHARMACEUTICALS and JUNO THERAPEUTICS the second descriptive words in both marks ought now be wholly discounted as JUNO is not just an “essential feature” to both marks but a “dominant cognitive cue”. The latter concept allows a decision maker to regard one element as “dominant” over the other, which was a concept foreign to this test prior to the recent authorities in 2017.
9. Ms Reid states at paragraph 6 of [Reid 1]:
The [SGP] was drafted in January 2015 and filed on 15 January 2015. At the time of filing, the traditional view of what was “substantially identical” was that two trade marks will be substantially identical if they are identical or differ only in minor aspects that have little or no significance on their identity. For example, if they differ only by way of the addition or subtraction of a space, or by way of singular and plural forms or possibly if by way of a single letter, or by way of visual aspects that do not change the fact they are phonetically identical. However, these examples are quite different to the whole word differences between JUNO PHARMACEUTICALS and JUNO THERAPEUTICS. Therefore, at the time Section 58 was not included in the [SGP].
10. Her reference to the “traditional view” is indeed correct. It is true that if, for example, two trade marks differ only by way of the addition or subtraction of a space [Carnival Cruise Lines Inc. v Sitmar Cruises Ltd [1994] FCA 936 (“Carnival”) at paragraph 63] or by way of singular and plural forms [Carnival], or possibly if by way of a single letter [POLYKEN/POLYKIN, DIOR/DION, SPORTSCRAFT/SPORTCRAFT, DAIMER/DAIMARU and POLYVIC/POLIVIC, all considered substantially identical],_bookmark6 or by way of visual aspects that do not change the fact they are phonetically identical_bookmark7 [DENTA-PURE 5K/DENTAPURE 5000] then they may be found to be substantially identical. However, once different entire words appear in both trade marks it appears that, prior to at least the filing of the [SGP] on 15 January 2015, decision makers have been more reluctant to regard the trade marks as substantially identical [FRIDAY’S/TGI FRIDAY’S, HAMILTON ESTATE /HAMILTON and SITMAR’S FUNSHIP/FAIRSTAR THE FUNSHIP [sic] found not to be substantially identical]. Likewise, the previous approach taken by the Registrar at this time appeared to place much more weight on dissimilar features of the marks that were “lacking in inherent distinctiveness” by themselves if they contributed to an overall impression of dissimilarity [obiter by the Registrar’s delegate in AMW Projects Pty Ltd v Ray Mullins & Sons Pty Ltd [2000] ATMO 17]. Although there was some support for an alternate approach in two decisions of the Registrar prior to the recent 2017 Full Federal Court authorities discussed below, neither decision disturbs the fact the Opponent was justified in following the above mentioned “traditional view” as at 15 January 2015. The comments in both authorities would now appear to be correct and ahead of their time. However one [being the writer’s decision in BBQ Store Pty Ltd v Plantation Outdoor Kitchens Pty Ltd [2015] ATMO 34] was handed down after the filing of the [SGP] and one was handed down shortly before this filing date, but was on appeal at the time [being Hearing Officer Thompson’s decision at first instance in Insight Clinical Imaging v Insight Radiology Pty Ltd [2014] ATMO 85 (“Pham 1”), which was upheld by the Full Federal Court in Pham].
11. Hence, section 58 was not reasonably available to the opponent at the time of filing the [SGP]. As such, the amendment relates to information, which the opponent could not have been aware of at the time of filing and should be allowed under regulation 5.12 [reg. 17A.34G] of the Regulations.
Mr Sykes’ submissions then effectively repeat the matters submitted by Dr Reid in her letter of 18 August 2017 set out in paragraph 13 above, concluding with:
16. Despite Pham stating that this was not a “new and unprincipled test”, it is very clear that this is a new principle applied to the process of applying the side-by-side comparison test. Although the test set out in Shell refers to “essential features” it does not prioritise the consideration of such features over and above the “total impression of resemblance or dissimilarity”. However, the Full Federal Court in Pham has now done exactly that in noting “dominant” cognitive cues and discounting “mere descriptive elements”. No such prioritisation occurred in Shell.
17. Following the same reasoning PHARMACEUTICALS and THERAPEUTICS are both visually and phonically completely different, but also both completely descriptive. However, JUNO is identical in both JUNO PHARMACEUTICALS and JUNO THERAPEUTICS and clearly the “dominant cognitive cue” in the mind of consumers. Therefore following the reasoning in Pham JUNO PHARMACEUTICALS and JUNO THERAPEUTICS may now be considered to be substantially identical.
After referring in some detail to my correspondence with the Opponent’s attorneys described at paragraphs 7 to 15 above (“the earlier correspondence”), Ms Stewart’s submissions in response on the s 58 Request were twofold. She submitted firstly that, “The Registrar has already ruled on the issue and confirmed that ruling, therefore to permit the issue to be re-argued is procedurally unfair to the Applicant.” While I understand the Holder has been inconvenienced by having had to address the s 58 Request at the hearing (and having had to prepare a possible response to the putative s 58 ground itself), I do not believe it has been denied procedural fairness in this instance, particularly in circumstances where the Opponent has not raised any matters which had not already been canvassed in the earlier correspondence.[2] Had I considered the issues less clear cut when I responded to the Opponent’s original requests in July and August I might have sought the Holder’s input at that time, but I did not (and still do not) think that was necessary. Moreover, I have not in any case been persuaded to reverse my original decision to refuse the s 58 Request.
[2] While the Opponent’s attorneys did not copy the Holder’s attorneys with any of their letters to the Registrar concerning the s 58 Request or the FI Request, I did so by email as soon as those letters came to my attention.
Ms Stewart’s alternative submission essentially expanded upon the reasons for refusal I gave in the earlier correspondence, notably that (with footnotes omitted):
18 (a) the question of whether it is appropriate to grant the request does not arise because the Registrar is precluded from granting the request under Reg 5.12(3)(b) [reg. 17A.34G(3)(b)];
(b) the Opponent’s Attorneys’ view (ie opinion) at the time of filing the [SGP] about whether JUNO PHARMACEUTICALS and JUNO THERAPEUTICS were (or could be) substantially identical is irrelevant and it is also mistaken;
(c) the decisions of the Full Court this year in Accor and Pham did not relevantly alter the manner in which substantial identity should be assessed as between word marks such as those in the present opposition; the [Holder] does not agree with the statement that “the approach to the test for substantial identity has changed” and notes that the Hearing Officer also disagreed with the Opponent’s submission; the Opponent’s submission is also contrary to the unanimous statement of the Full Court in Pham at [52] that “We do not accept IR’s submission that ICI was positing a new and unprincipled test determining substantial identity” and the [Holder] submits that this clear and unequivocal statement of the Full Court alone is sufficient to dispose of the Opponent’s argument that the s 58 Request ought to be allowed on the basis that the test in Pham was new or that it was information of which the Opponent could not reasonably have been aware;
(d) it is incorrect to assert that there has been a “change in approach” which “means that in comparing JUNO PHARMACEUTICALS and JUNO THERAPEUTICS the second descriptive words in both marks ought now be wholly discounted”; the [Holder] does not agree that the second words are “entirely descriptive”, “completely descriptive” or that they ought to be “wholly discounted” – that is not the test articulated in either Accor or Pham, which incorporated the language “dominant cognitive cue”; the test as articulated by the Opponent is more accurately described as a “sole cognitive cue”, which would be the result of the [sic] “wholly discounting” the words “THERAPEUTICS” and “PHARMACEUTICALS” as argued for by the Opponent;
(e) the words “THERAPEUTICS” and “PHARMACEUTICALS” are more than merely descriptive within the respective marks; the [Holder] submits that the word “THERAPEUTICS” connotes a more holistic approach to health, wellbeing and healing than the word “PHARMACEUTICALS”, which connotes a more medicinal and less holistic approach to sickness; for example, the term “therapist” has an entirely different meaning to the term “pharmacist”;
(f) paragraph 9 of the Opponent’s Submissions (co-authored by Ms Reid) extracts paragraph 6 of [Reid 1] and goes on in paragraph 10 of the Opponent’s Submissions to cite Ms Reid herself as an authority for the propositions extracted.
19. For the reasons set out above, the [Holder] does not agree with the Opponent’s conclusion “Hence, section 58 was not reasonably available to the opponent at the time of filing the [SGP]”; the [Holder] says that it was available to the Opponent at that time.
On balance I tend to agree with Mr Sykes that the words “therapeutics” and “pharmaceuticals” are, as he put it, “both completely descriptive” (and, I would add, have overlapping meanings) in the context of the parties’ goods and services of interest, notwithstanding Ms Stewart’s submissions to the contrary at paragraphs (d) and (e) above, supported by definitions from the Macquarie Dictionary which she tendered at the hearing.[3] However I believe the points she highlighted above are otherwise well taken. I would also make the further observations set out below.
[3] Possibly Ms Stewart so submitted in case I acceded to the s 58 Request, but given I have not, it is unnecessary to dwell on this issue.
As the Opponent acknowledges, the Registrar has no power or discretion to grant the s 58 Request unless she is satisfied the amendment sought relates to “information” of which the Opponent could not reasonably have been aware earlier. Frankly, I doubt whether a judicial decision which issued after an SGP was filed would ever qualify as “information” in the sense contemplated by the relevant regulation.[4] To my mind the word “information” as used in reg. 5.12(3) or reg. 17A.34G rather suggests information in the nature of relevant documentation or other objective evidence that was not reasonably discoverable earlier and that would clearly support the ground an opponent sought to add. Judicial decisions, by contrast, are of their nature the subject of interpretation or argument (or possibly appeal) and they turn on the specific facts in evidence before the court, unlikely to be directly analogous to those in an entirely unrelated trade mark opposition. In paragraph 8 of his written submissions (set out in paragraph 17 above) Mr Sykes himself refers to the Opponent’s attorneys’ “informed view” on substantial identity prior to the decisions in Accor and Pham, which decisions, “in [the Opponent’s attorneys’] opinion, changed the approach” as to how substantial identity should be assessed.
[4] Even if an opponent’s understanding or interpretation of that decision were impeccable, which as indicated in the earlier correspondence is by no means the case here in my view.
Nor, for the reasons set out in the earlier correspondence (reproduced at paragraph 7 above), do I agree with the Opponent’s attorneys that Accor or Pham “changed the approach” to assessing substantial identity in any event. In paragraph 6 of Reid 1 Dr Reid refers to the “traditional view” of substantial identity the Opponent’s attorneys apparently believe prevailed when they prepared and filed the SGP, a theme expanded upon by Mr Sykes at paragraphs 9 and 10 of his above-quoted submissions. However, that perceived traditional view is as I see it seemingly based upon a selective understanding of Gummow J’s often-quoted obiter dicta from Carnival. It takes no account of the context of his Honour’s words, where the Court was comparing trade marks fundamentally different from JUNO PHARMACEUTICALS and JUNO THERAPEUTICS, being FUN SHIP (or FUN SHIPS) on the one hand and SITMAR’S FUNSHIP and FAIRSTAR THE FUNSHIP on the other.[5]
[5] See PB Foods Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47 at [33]-[39], for example, where Carr J approves Carnival but differentiates it from the position where the sole difference between the marks under comparison is that one or both of them contains an additional descriptive word.
As far as the Opponent’s reliance on Accor is concerned, I reject the Opponent’s submission that the Full Court was doing anything other than applying the longstanding test for assessing substantial identity set out by Windeyer J in Shell. Indeed, the Court unequivocally said so in its decision at [280]:
As to the test to be applied in determining whether a respondent has used, as a trade mark, a sign that is substantially identical with the registered trade mark, each mark is to be compared side by side. The point of the comparison is to identify similarities in the marks and the differences between them for the purpose of enabling an assessment to be made of the importance of those things having regard to the “essential features” of the registered trade mark and the “total impression of resemblance or dissimilarity that emerges from the comparison”: Shell, Windeyer J at 414.
I am accordingly unable to understand the Opponent’s apparent difficulty with the use of the words “dominant cognitive cue” by the Full Court in Accor to conveniently refer[6] to the words “HARBOUR LIGHTS” as they appear in the “composite mark” the Court had earlier reproduced and described at [53] of its decision. Certainly, the Full Court in Pham had no such difficulty, stating at [51]:[7]
There is no doubt in our view that the Full Court in Accor in using the phrase “dominant cognitive cues” was making analogical reference to the “essential features” of the mark for the purposes of a side by side comparison in determining whether marks are substantially identical consistent with the observations of Windeyer J in Shell at 414 as earlier recognised by the court in the reasons. The dominant cognitive cues are the essential features striking the eye in a side by side comparison so as to determine whether marks are substantially identical.
[6] At [206], [258]-[261] and [267].
[7] I quoted this passage from Pham in my letter of 31 July 2017 to the Opponent’s attorneys (reproduced in full at paragraph 7 above), but do so again here for ease of reference.
As far as the Opponent’s reliance on Pham itself is concerned, Mr Sykes’ above-quoted submission suggests that when they filed the SGP in January 2015 the Opponent’s attorneys may have been aware of Hearing Officer Thompson’s decision of 15 September 2014 in Pham 1, but did not apparently think it significant because it was “ahead of [its] time” and was then subject to appeal. They might nevertheless have taken notice of Mr Thompson’s discussion of substantial identity generally at [17]-[23] and particularly his references at [18]-[19] to the 1999 decision of Carr J in PB Foods Ltd v Malanda Dairy Foods Ltd[8] (“Malanda”):
18. …The descriptive matter, the words “clinical imaging” and “radiology” are subject to heavy discounting in the comparison: they are words which come within a similar ambit to those referred to by Carr J in Malanda at [38] in connection with flavoured ice cream:
The question to be decided in each case is largely one of fact, provided that the test is properly applied. Comparing CHOC CHILL, or COFFEE CHILL, or VANILLA CHILL or STRAWBERRY CHILL with CHILL, I note the differences comprising an extra word of varying length the function of which is to describe flavour, but I note the similarity of the constant use of the word CHILL. I have already mentioned the importance of CHILL and the degree to which it is essential to the mark. Bearing in mind the relative importance of CHILL I give very little weight to the descriptors CHOC, COFFEE, VANILLA or STRAWBERRY.
19. Similarly I give very little weight in the comparison to the descriptors “clinical imaging” and “radiology”: they mean, in this context, the same thing and refer directly to the similar services of the parties. Mr Ng submitted that Malanda should be distinguished…on the basis that there was involved in that decision a “claim to vary” which operated in much the same way as a disclaimer. I disagree: if disclaimers or claims to vary were still commonly entered onto the Register, the words “clinical imaging” and “radiology” would no doubt be subject a appropriate disclaimer or claim to vary. The relevant passage in Malanda reads, at [38]:
In the end, I found myself in agreement with the delegate’s reasoning and conclusion which is set out at p10 of her reasons as follows:
When the side by side comparison is made between the mark CHILL, used by Malanda, and the application trade mark it is not a simple one to one comparison. P B Foods’ mark is not simply CHOC CHILL. PB Foods has chosen to file its mark as one which will be varied in use and in doing so has made it clear that the essential feature of its trade mark is the word CHILL which is used with a purely descriptive variable feature. In selecting the goods, a prospective purchaser will therefore recognise the word CHILL as the badge of origin and will see the word CHOC or COFFEE or STRAWBERRY or VANILLA as nominating nothing more than the flavour of the product. When considered in this light, it seems to me that the comparison between CHILL and CHOC CHILL does lead to a “total impression of similarity” and the proprietorship claim is supported.
[8] (1999) 47 IPR 47. I note Carr J expressly applied both Shell and Carnival and that he discussed these and several other decisions which considered the issue of substantial identity at [23]-[39].

Mr Thompson’s decision in Pham 1 was reversed on appeal by Davies J on 23 November 2016, (almost two years after the SGP in the present matter was filed), before eventually being affirmed by the Full Court. Nevertheless it is perhaps worth noting that Davies J reached a different view from Mr Thompson not because he disagreed with Carr J’s reasoning in Malanda, but because he considered Malanda was distinguishable since, unlike Pham, it only concerned word marks. After referring to the respondent’s reliance on Malanda, Davies J explains at [19]:
By parity of reasoning, Insight Clinical argued that customers would know that radiology services and clinical imaging services are the same thing and thus very little weight should be given in the comparison to the descriptors “clinical imaging” and “radiology”. That also was the approach taken by the Registrar’s delegate who gave very little weight in the comparison to the descriptors “clinical imaging” and “radiology”. However, [Malanda] concerned the comparison of plain word marks whereas in the present case, the devices in the two marks have distinct visual differences. Accordingly, even if very little weight is given in the comparison of the descriptors “clinical imaging” and “radiology”, the other differences between the marks sufficiently distinguish the marks from each other to give a total impression of dissimilarity, not resemblance.
I do not accept the Opponent’s claim that in overturning Davies J’s decision the Full Court in Pham was positing any kind of “new test” for assessing substantial identity. Indeed it emphatically endorsed Windeyer J’s long-standing formulation from Shell. As I said in the earlier correspondence, the Court:
…agreed with the trial judge’s statement of the applicable test as put by Windeyer J, but it overturned the earlier decision because that test was in its view incorrectly applied, stating at [55]:
The primary judge’s analysis, in contrast to the description of the reasoning of the Registrar’s delegate, does not refer to the essential elements of the marks or assess the relative importance of the differences and similarities having regard to those essential elements. The process of evaluation thereby miscarried. It is thus necessary that this Court carry out its own evaluation.
For these reasons I agree with Ms Stewart that, “the Opponent’s Attorneys’ view (ie opinion) at the time of filing the [SGP] about whether JUNO PHARMACEUTICALS and JUNO THERAPEUTICS were (or could be) substantially identical is irrelevant and it is also mistaken.” In my view the question of whether the parties’ trade marks were “substantially identical” in the context of their goods and services of interest was at the very least reasonably arguable on 15 January 2015 when the SGP was filed based on the law as it then stood. I am accordingly not satisfied that the s 58 Request “relates to information of which the opponent could not reasonably have been aware at the time of filing the [SGP].” The Registrar is therefore precluded by reg. 17A.34G(3)(b) (reg. 5.12(3)(b)) from granting the request, which is now formally refused.
I also confirm the refusal of the FI Request foreshadowed in the earlier correspondence. Reid 2 itself is modest in its claims as to the FI’s actual probative value:
12. …Such a small amount of evidence would add little to the existing ground of opposition, being under s 60, but would add much more to the new ground of opposition under s 58 that does not require a reputation to be established.
There being no s 58 ground following my refusal of the s 58 Request, the Opponent’s own view is that the evidence in Meulblok 2 constituting the FI is otherwise of little relevance to the opposition. I agree. Indeed, as mentioned, it would not in my view have been significant in establishing the Opponent’s putative s 58 ground either.
I accordingly turn now to consideration of the Opponent’s s 60 ground taking into account just the regularly filed evidence in Katsanos, MacDonald and Meulblok 1 described in paragraph 5 above.

The Onus and Relevant Date

To succeed the Opponent bears the onus of establishing its s 60 ground, with the required standard of proof being the civil standard based on the balance of probabilities.[9] As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd[10] the relevant date at which the rights of the parties are to be determined is the “filing date” of the opposed application, which in this case corresponds with the priority date of the IRDA, 3 December 2013 (“the Relevant Date”).

Discussion

[9] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26], affirmed by the Full Federal Court (Besanko, Jagot & Edelman JJ) in Telstra Corporation Limited v Phone Directories Company Pty Ltd (2015) 116 IPR 207 at [132]-[133].

[10] (1954) 91 CLR 592 at 595.

Section 60

Section 60 of the Act is reproduced below:

Trade mark similar to trade mark that has acquired a reputation in Australia

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.

The ground based on s 60 is particularised in the SGP as follows:
Trade mark is similar to a trade mark which has acquired a reputation in Australia - Section 60
The Opponent had, before the [Relevant Date], acquired a reputation in Australia in the marks “JUNO PHARMACEUTICALS” (Application No: 1664266) and “JUNO PHARMACEUTICALS + device” (Application No: 1664272) including in relation to pharmaceutical products and advisory services. The marks were first used overseas (Canada and the UK) in 2011. Juno Pharmaceuticals became incorporated in Australia in March 2012. The mark has been used continuously since the start of 2013 on items such as invoices, business cards, letter heads, packaging and product labels. The use of the “Juno Therapeutics” mark by the [Holder] for any goods or services the same or similar to that of the Opponent would be likely to deceive or cause confusion in the market place. The use of “Juno Therapeutics” may falsely suggest that the Applicant’s goods or services are those of the Opponent. Further, the use of “Juno Therapeutics” may also suggest that the Applicant or its goods or services are related to the Opponent. The use may further suggest that the Applicant’s good[s] or services are sponsored, approved, affiliated or licensed by the Opponent.
I will for convenience refer hereafter to the JUNO PHARMACEUTICALS and JUNO PHARMACEUTICALS + Device marks underpinning the Opponent’s s 60 ground collectively as “the JP Marks” and individually as “the JP Word Mark” and “the JP Device Mark” respectively. The JP Device Mark is shown below:

For s 60 to apply, the Opponent would as a threshold issue need to establish that as at 3 December 2013 one or both of the JP Marks had acquired the kind of “reputation” contemplated by the section. As explained below, it has not done this on the evidence before me and consequently it cannot make out this ground.
As Heerey J noted in Le Cordon Bleu B.V. v Cordon Bleu International Ltee:[11]
…the reputation contended for by the [opponent] would have to be one of which a significant or substantial number of persons were aware: ConAgra at FCR 346.[12] 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.
[11] (2000) 50 IPR 1 at [91]. His Honour’s observation was in the context of s 28(a) of the Trade Mark Act 1955 which, in the circumstances of that case, also required reputation to be established.
[12] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 23 IPR 193.
The Designated Goods and Services are undoubtedly relatively specialised and their immediate market would presumably be centered on medical professionals and hospitals, although extending perhaps to pharmacies generally, from which the Holder’s pharmaceutical preparations for the treatment of cancer might be dispensed to the relevant public. It is amongst this cohort, then, that the claimed reputation of the JP Marks must be assessed.
As far as assessing reputation generally, Kenny J said the following in McCormick & Co Inc v McCormick:[13]
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd(1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson(1998) 42 IPR 473; and RS Components Ltd v Holophane Corp(1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd(2001) 51 IPR 1, Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd(1997) 38 IPR 495 (Nettlefold), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[13] (2002) 51 IPR 102 at [86].
With that as background, then, what does the evidence in the present matter show? George Katsanos, whose declaration constitutes all of the Opponent’s evidence in support, begins by saying:
1. I am the CEO of Juno Pharmaceuticals Pty Ltd (JP).
Regrettably, it must be said, the declaration is poorly drafted and is difficult to follow thereafter. The principal difficulty I have is that Mr Katsanos apparently makes no distinction between the Opponent[14] and “JP”, the Australian company of which he is CEO (and also apparently “managing director” as he later says). Moreover, nowhere does he explain what the actual relationship between his company and the Opponent is. It is accordingly difficult to say with any certainty which of the two entities took which actions in which jurisdiction(s) at any particular time, all matters critical to the Opponent’s case.
[14] Other than once in a heading, the Opponent is not actually mentioned at all in the declaration. The Holder, for its part, is misidentified as “Juno Therapeutics Pty Ltd.”
That said, Mr Katsanos says the following about himself and his role with “JP”:
3. I have worked for JP for 3 years and in the pharmaceutical industry for over 20 years.
4. My responsibilities in my current position relate to the sourcing, development and registration of pharmaceutical products and the marketing of such products to pharmaceutical wholesalers in various countries.
5. I also have responsibility for recruitment and management of staff, the finances of JP, as well as identifying and developing opportunities for expanding the range of pharmaceutical products marketed by JP.
Under the heading “Juno Pharmaceuticals Inc”, (being the sole explicit mention of the Opponent in Katsanos), he continues:
6. JP is a company with offices in Australia, United Kingdom, India and Canada. In Australia, the headquarters is located in Melbourne and is staffed by approximately 15 employees. JP employs around 40 staff globally.
7. JP’s turnover last financial year can be found in Confidential Exhibit GK-1.
[A single, relatively modest, figure in Australian dollars is disclosed in Exhibit GK-1 for the calendar year 1 January to 31 December 2015, being well after the Relevant Date.]
8. JP has around 20 pharmaceutical products currently approved for the Australian market, a further 27 products in the Therapeutic Goods Administration (TGA) submission phase and a further 2 products planned for submission in 2016- Refer to Exhibit GK-2.
[Of the 27 products listed in Exhibit GK-2 four relate to New Zealand and 23 to Australia. Of those 23, only two were submitted to the TGA for approval before the Relevant Date and neither was actually approved until after that date. There is no mention in the Exhibit of the trade mark JUNO or similar.]
Under the heading “Initiating Company and First Use” Mr Katsanos says:
9. JP became incorporated in Australia in March 2012-Exhibit GK-3.
[Exhibit GK-3 is a copy of a certificate issued by the province of Ontario, Canada confirming “Juno Pharmaceuticals Inc.” was incorporated in Canada on 29 June 2011.]
10. The [JP Marks] were specifically chosen in 2011 in the UK and Canada. The JP Marks were developed in internal workshops over the course of a few months in the UK and Canada branches. A designer was engaged to assist in the development of marks that would best represent the identity of the company. The process of selecting a mark took some time given the high number of pharmaceutical companies. However, we finally decided on the JP Marks for the following reasons; The JP head office is based in Canada. Juno beach was one of the five beaches that the allied forces landed on during D-Day (June 1944). Juno beach was the responsibility of 3rd Canadian infantry division. For this reason, the JP Marks were chosen.
[I mention that the Opponent’s Australian applications 1664272 and 1664266 to register the JP Marks were filed on 12 December 2014 and are currently being opposed by the Holder.]
Mr Katsanos then exhibits an email exchange from 22 September to 11 October 2011 between a marketing business in South Africa and an individual in the United Kingdom with the email address “[email protected]” concerning development and finalisation of the JP Device Mark. He continues:
11. …The first use of the JP marks was on 10 February 2012 in an email signature - Exhibit GK-7
[Exhibit GK-7 is a copy of a (seemingly internal) email from Mark Roberts in the U.K. to three named but otherwise unidentified individuals headed “December Invoice” and reading “Dear Padmaja, Attached our December invoice. Thanks/Regards Mark Roberts” with the JP Device Mark appearing below Mr Roberts’ name. Attached to the email is an invoice for “Consulting Fees” in Pounds Sterling dated 31 December 2011 issued to a company in Malta by the Opponent in Canada specifying the Opponent’s Canadian bank account details.]
For no apparent reason, but reproduced below as an indication of the quality of his evidence, Mr Katsanos then says:
12. Our trusted and loyal suppliers collaborate with us to create the most cost-effective supply chain to maximise profit, quality, and timely delivery within budget. We provide a dedicated partner executive for each one, because the stronger the relationship, the more we can achieve together.
Mr Katsanos concludes his evidence under the “Initiating Company and First Use” heading by saying:
13. JP’s company mission is to be a trusted and reliable pharmaceutical business. On the 16 March 2012, JP was registered with ASIC - Refer to Exhibit GK-8.
[Exhibit GK-8 is an apparently internal email dated 16 March 2012 from Mark Roberts in the U.K. to three individuals reading “Dear All, JPA is now a registered company in Australia – as of March 16^th, 2012. Copy of registration attached. Craig – you want the original in Canada, or shall we keep it in Australia? Regards, Mark.” Attached to the email is a copy of the relevant certificate issued by the Australian Securities and Investments Commission. I note Mr Katsanos already referred to the company’s incorporation in his paragraph 9 discussed above (albeit there exhibiting the wrong documentation) and that he does so again for no apparent reason in his paragraph 15 reproduced below.]
Under the heading “JUNO PHARMACEUTICALS in Australia” Mr Katsanos says:
14. I will provide evidence of prior use of the [the JP Marks] from the period of 2011 to 2016. It is my belief that through this use of the marks, they have become identified with the goods and services provided by JP and through this use have acquired a reputation in Australia. This reputation is indicated by how much we have used the JP Marks to sell and promote our goods and services.
15. Before [the Relevant Date] JP acquired a reputation in Australia for the JP Marks in relation to pharmaceutical products and advisory services. The JP Marks were first used overseas (Canada and the UK) in 2011. JP became incorporated in Australia in March 2012 -Exhibit GK-8.
16. The JP Marks have been used in Australia continuously since the start of 2013 on items such as invoices, business cards, letter head, registration of products, packaging and product labels. …
[I have omitted the balance of paragraph 16, which consists of Mr Katsanos’ opinion as to the likelihood of confusion as between the Opposed Mark and the JP Marks.]
Under the heading “Products and Service [sic] of JUNO PHARMACEUTICALS” Mr Katsanos continues:
17. On 9 May 2014 we registered our first product with the TGA called Tirofiban Solution for Infusion. The pre-submission date for this product was 28 February 2013, the actual submission date was 9 May 2013 and the product was approved on 21 January 2014- Refer to Exhibit GK-2.[15]
18. Our second product, Ketorolac Trometamol was registered with the TGA on 20 August 2014. The pre-submission date for this product was 26 April 2013, the actual submission date was 4 July 2013 and the product was approved on 12 August 2014 - Refer to Exhibit GK-2.
[15] See my description of Exhibit GK-2 at paragraph 44 above.
Under the heading “Use of the JP Marks” (and reproduced below only insofar as the claimed use may have occurred in Australia and, unless I have noted otherwise, before the Relevant Date), Mr Katsanos says:
20. Since 2012, the company has continuously used the JP Marks in connection with our business, as demonstrated by the examples below:[16]
[16] Mr Katsanos does not say what the terms “the company” or “our business” refer to, but I understand him here to be referring to any claimed use, whether in Australia or elsewhere.
21. Our staff have been issued with “Business cards” which all bear the JP Marks. In the course of business these are used regularly when dealing with stakeholders, clients and other business associates - Refer to Exhibit GK-9.
[Exhibit GK-9 comprises a copy of a single, undated business card, being that of Paul Meulblok and featuring the JP Device Mark.]
22. In the course of business, correspondence such as letters and emails containing the JP Marks are used regularly when dealing with stakeholders, clients and other business associates - Refer to Exhibit GK-6, Confidential Exhibit GK-7 and Exhibit GK-10.
[Exhibit GK-6 comprises a copy of an internal email dated 8 March 2012 from Mark Roberts of the Opponent’s London office to five named but otherwise unidentified recipients attaching “the Juno Letterhead in PDF and Word Format,” which Mr Roberts says, “can be used for any local printing and emailing.”]
[I described Confidential Exhibit GK-7, being a copy of an apparently internal email unrelated to Australia, at paragraph 46 above.]
[Exhibit GK-10 merely comprises another copy of the internal email contained in Exhibit GK-8, which I described at paragraph 48 above.]
23. The JP Marks are often used in promotion at conferences. A banner has been circulated for an upcoming product launch of Hexvix product, at pharmaceutical conferences such as Urological Society meetings.
…
26. The JP Marks have been in continuous use in Australia since June 2012 in the course of billing and invoicing.
27. JP has been invoiced by suppliers, researchers and manufacturers continuously since 2012.
28. I have provided a series of invoices to demonstrate continuous use in Australia over the period of 2012-2016 - Refer to Confidential Exhibit GK-12.
[Confidential Exhibit GK-12 comprises copies of just two invoices, both dated well after the Relevant Date, 10 August 2015 and 31 January 2016 respectively.]
29. I have also provided an early invoice, issued by JP dated 31 December 2011- Refer to Confidential Exhibit GK-11.
[The invoice shown in Confidential Exhibit GK-11 is the same invoice shown in Confidential Exhibit GK-7, which I described at paragraph 46 above and which bears no apparent connection with Australia.]
30. The JP Marks have been in continuous use on our packaging since 2013.[17]
[17] I note this statement appears to be at odds with what Mr Katsanos says in following paragraph 31.
31. On 18 December 2014 [being more than 12 months after the Relevant Date] JP began producing labels and carton packaging.
…
33. The JP Marks have been in continuous use through the process of importing goods from 12 December 2013 [being after the Relevant Date].
...
35. JP has been involved in sponsorship arrangements since 28 February 2013. A sponsor holds the registration of a medicine, arranges for the exportation/importation or manufacture of the medicine on behalf of another person and is responsible for notifying the TGA of adverse events and performing recalls if required.
36. The TGA defines a Sponsor as a person or company who does one or more of the following:
i. exports therapeutic goods from Australia
ii. imports therapeutic goods from Australia
iii. manufactures therapeutic goods for supply in Australia or elsewhere
iv. arranges for another party to import, export or manufacture therapeutic goods.
37. Since the year 2013, JP has filed applications with the TGA with multiple tradenames. If a customer is identified at filing we would include their preferred tradename e.g. Ketorolac ACT - Exhibit GK-2.
[I described Exhibit GK-2 at paragraph 44 above.]

Mr Katsanos concludes by (again) claiming in the penultimate paragraph of his declaration that:
38. The JP Marks have been in continuous use since their introduction in Australia in March 2012, before the priority date of the JUNO THERAPEUTICS mark. Through the aforementioned use, the JP Marks have gained an international, industry wide reputation.
The last paragraph of the declaration repeats, word for word, the identical, seven-line long, opinion as to the likelihood of confusion that Mr Katsanos offered earlier at paragraph 16 of his declaration.
Turning to the evidence in answer, James MacDonald is the Holder’s “Chief Intellectual Property Officer,” a position he has held since March 2014. He says that the Holder “was founded in 2013 as a biopharmaceutical company” in the United States, originally under a different name, and changed to its current name on 23 October 2013. He says that the Holder “adopted the [Opposed Mark] during 2013 and commenced commercial use of the trade mark in the United States during 2013.” He describes the nature of the Holder’s “primary business” as being “to research, develop, and commercialize cancer immunotherapy products” and details several of its specific activities.
Mr MacDonald also describes the Holder’s growth since its founding in 2013 (with an “initial funding round of $176 million”). He mentions, inter alia, the Holder’s listing on the United States NASDAQ (“raising an additional $300 million of funding through the process”) and its various partnerships with other pharmaceutical, biopharmaceutical and biotechnology companies around the world (including “a 10-year collaboration with Celgene, a global biopharmaceutical company, that included a $1billion up-front payment” and, as far as Australia specifically is concerned, “a licensing partnership between [the Holder] and Peter MacCallum Cancer Centre in [Melbourne]”). He says that the Holder “and its affiliates currently employ over 550 people worldwide.”
Most of the information Mr MacDonald provides concerns actions or events which occurred after the Relevant Date and/or is information that does not relate directly to Australia. It is however in any event unnecessary to discuss his evidence any further as far as my decision in the present opposition is concerned.
As mentioned earlier, Paul Meulblok is CFO and CIO of JP Australia and his first declaration, Meulblok 1, constitutes all of the Opponent’s evidence in reply. As with Katsanos, this declaration too is poorly drafted and needlessly repetitive, with Mr Meulblok often restating later in the declaration the identical information he provided earlier. Very little of Meulblok 1, moreover, is actually in reply to the Holder’s evidence in answer, with the declaration mostly taken up with the Opponent’s claimed use of the JP Marks. To the extent that Mr Meulblok does respond to Mr MacDonald’s evidence there is no need to describe this here since it is not relevant to my decision. As regards the balance of the declaration Mr Meulblok largely repeats what Mr Katsanos said, in some cases exhibiting the identical material, and it is accordingly to that extent essentially redundant. With some significance to the s 60 ground of opposition, nevertheless, Mr Meulblok adds:
14. JP’s[18] turnover in Australia for the years ending 31 December 2013, 31 December 2014 and 31 December 2015 can be found in Confidential Exhibit PM2-2. The high volume of sales as presented in Exhibit PM2-2 is clear evidence of JP’s established reputation before the priority date of the opposed mark.
[18] Like Mr Katsanos, Mr Meulblok defines Juno Pharmaceuticals Australia Pty Ltd as “JP”. He does not mention the Opponent as such at all in the declaration, although some of his references to “JP” may possibly be intended to refer to the Opponent rather than the Australian company.
I note that only the “turnover” (referred to as “revenue” in Exhibit PM2-2) for the year ending 31 December 2013 could in principle have been generated before the Relevant Date. The sum indicated for this year does not however indicate a “high volume of sales” in my estimation. Nor does Mr Meulblok say what was actually sold to generate this revenue (at the hearing Mr Sykes agreed the revenue figure was likely to include (unspecified) “services” which were apparently provided by JP Australia) or mention the extent to which the “sales” may have involved use of one or both of the JP Marks.
Exhibit PM2-2 also includes a “Consolidated Profit and Loss Statement for the year ended 31 December 2014” for JP Australia. Although this was after the Relevant Date, the Statement does compare the 2014 figures with those for 2013, from which I note a net loss was recorded in each year. The Statement further indicates that an insignificant amount was spent on advertising in 2013, $11 was spent under the heading “Telephone” for the year and nothing was spent that year on “TGA Fees,” “Permits, Licenses and Fees,” “Postage” or “Packaging.” I note too that Mr Meulblok says that, “The Statement clearly shows use of the [JP Word Mark] in the document header and at multiple instances throughout the report.” However the sole mention of “JUNO” in the Statement is when it occurs in the company name “Juno Pharmaceuticals Pty Ltd.” I do not consider this to be use of JUNO (or JUNO PHARMACEUTICALS) as a trade mark in the course of trade.
Mr Meulblok otherwise refers to the three products for which JP Australia had at least submitted a “pre-submission application” to the TGA before the Relevant Date, albeit none was actually approved for sale until 2014. Mr Meulblok claims that correspondence from the TGA he exhibits “clearly displays the [JP Word Mark] in the address heading.” I do not agree. The appearance of the company name “Juno Pharmaceuticals Pty Ltd” as the addressee of this correspondence is not use of the JP Word Mark as a trade mark in my view. Mr Meulblok does exhibit mock-ups of an actual label and packaging apparently used or proposed to be used for the product Tirofiban which bear the JP Device Mark, but these could not have been used before the Relevant Date since the TGA did not grant approval for Tirofiban to be sold until 21 January 2014. Even if the Opponent could demonstrate that its pre-approval correspondence before the Relevant Date with the TGA concerning the three products in question did involve use of one or both of the JP marks, their use in this context would obviously not contribute significantly to their reputation amongst medical and other health professionals or their patients in any event.
As the authors of Shanahan put it, s 60 “envisages some substantial likelihood of deception or confusion and thus more than a minimal reputation for the prior mark.”[19] The following observation of the Hearing Officer in Sara Lee Corporation v Bali Blue Pty Ltd is also pertinent in this case:[20]
The reputation in Australia cannot be assumed – it must still be established as a question of fact – per Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 106 ALR 465; 23 IPR 193.
[19] Shanahan’s Australian Law of Trade Marks and Passing Off, 4^th ed, at [50.2400].
[20] (2003) 59 IPR 619 at [25].
To conclude, on the evidence before me I am not satisfied either of the JP Marks had sufficient reputation in Australia as at the Relevant Date to enliven the Opponent’s s 60 ground.

Decision

Reg. 17A.34N of the Regulations provides:
(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 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 the grounds on which the
IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar's decision.
I have found that the Opponent has not established its s 60 ground and as the Registrar’s delegate thus direct that protection of the Opposed Mark be extended to Australia one month from the date of this decision in respect of all of the Designated Goods and Services. If the Registrar has been served with a notice of appeal before that time, I direct that extension of protection shall not occur until the appeal has been decided or discontinued or, if this decision be successfully appealed, that the IRDA be dealt with as the Court sees fit. If the Registrar has not been served with a notice of appeal before that time the International Bureau will be notified of this decision as soon as practicable after the appeal period has ended, in accordance with reg. 17A.34N(2).

Costs

In the event that it prevailed, Ms Stewart requested an award of costs in the Holder’s favour. As the successful party, the Holder is so entitled and I accordingly award costs against the Opponent as per Schedule 8 of the Regulations.

Michael Kirov
Hearing Officer
Trade Marks Hearings
15 December 2017