This matter concerned an opposition by Janssen Biotech to the protection of an International Registration owned by Celltrion, Inc., in Australia. The relevant trade marks are shown below, each covering the same pharmaceutical goods in Class 9.
The opponent attempted to argue that due to the trade marks covering identical goods and sharing a ‘similar’ circular device, there was likely to be confusion amongst consumers as to the true origin of the goods bearing the Applied For Mark.
However, the Hearing Officer took the view that the impression made by the trade marks, when considered as a whole, were ‘quite different’. Furthermore, the Hearing Officer considered that it would not be likely that consumers were caused to suffer deception or confusion as a result of the two trade marks coexisting.
The opponent also attempted to argue that due to its prior reputation deception or confusion was likely to arise (section 60). On this, the Hearing Officer agreed that the opponent had a sufficient reputation to trigger section 60, however, due to the highly specialised nature of the goods at issue, deception or confusion remained unlikely.
The opposition was not successful and the application is to proceed to acceptance.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions.