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…

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: [2017] ATMO 160
Decision Date: 15 December 2017

CaseChat Overview and Summary

Juno Pharmaceuticals Inc (the applicant) sought to register the trade mark "JUNO" in relation to pharmaceutical preparations and related services. Juno Therapeutics Inc (the respondent) opposed this application, arguing that the proposed mark was deceptively similar to its own registered trade mark "JUNO" and its associated logo, which it used in relation to a range of goods and services including cancer therapies and medical research. The matter came before the Federal Court of Australia.

The primary legal issue before the Court was whether the applicant's proposed trade mark "JUNO" was deceptively similar to the respondent's registered trade mark "JUNO" and its logo, within the meaning of section 44 of the *Trade Marks Act 1995* (Cth). This required the Court to consider the degree of visual, aural, and conceptual resemblance between the marks, as well as the similarity of the goods and services in relation to which they were used.

The Court applied the established principles for assessing deceptive similarity, including the "imperfect recollection" test and the consideration of the marks as a whole. It found that while the word "JUNO" was identical in both marks, the respondent's registered mark included a distinctive logo. However, the Court determined that the dominant element of the respondent's mark was the word "JUNO" and that the visual and conceptual similarities between the word marks were significant. Given the high degree of similarity between the marks and the overlap in the pharmaceutical and medical fields, the Court concluded that there was a real likelihood of deception or confusion among consumers.

The Court upheld the opposition and ordered that the applicant's trade mark application be refused.

Orders