One of the most basic requirements for registration of a new trade mark is that it must not be deceptively similar to, or indistinguishable from an existing trade mark on the register. However, exactly how similar two marks can be, without crossing that line, can vary depending on the type of products and services, or class, that the trade mark relates to. A trade mark designed to distinguish between brands of consumer goods will need to meet a different standard to those that distinguish between two specialist products aimed at a highly engaged and educated group of purchasers.
A recent decision from the Australian Trade Mark Office (the Office) in Janssen Biotech, Inc. v Celltrion Inc. has given some guidance in relation to trade marks for specialist educated markets and their ability to co-exist with relatively narrow differences.
Janssen opposed extension of protection of an international registration designating Australia for a Rosette Device. The basis of the opposition was built on Janssen’s registration and use of its REMICADE logo. The marks are:
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The application was for highly specific and sophisticated goods – pharmaceutical preparations for treatment of auto immune diseases and preparations of therapeutic and monoclonal antibodies. The opposition eventually distilled down to allegations that the marks were deceptively similar under section 44 (a similar trade mark) and conflict under section 60 (famous trade marks).
In considering the first issue, the Office believed the presence of the opponent’s text element, Remicade, was “striking and unique” and it was found in a prominent position in the opponent’s trade mark. The Hearing Officer went on to consider the graphic elements and noted that “while both devices are circular, the opponent’s logo is distinctly spiral, whereas the holder’s rosette device, is more obviously a central circle which is surrounded by three broken lines moving outwards and around the inner circle in the style of a propeller”. The Office held the trade marks were not deceptively similar.
In relation to the famous marks issue, the opponent submitted that the holder used its rosette device with the word REMSIMA and that the holder had adopted a strategy to get as close as possible to the opponent’s branding because it is the market leader. These submissions were both rejected as unsupported by the evidence.
In considering the issue, the Office relied in part on a decision from the Federal Court of Australia in Kawa Company Ltd v N v Organon where the court had noted the following points as important:
- It is the medical practitioner who determines how patients will be treated and therefore regard must be had to the risk of the doctor misprescribing one pharmaceutical for the other.
- An attendant risk associated with the activities of a pharmacist is not particularly high as the pharmacist is a trained professional. His/Her obligation is to dispense the correct pharmaceuticals.
- Two medical practitioners gave evidence that they take extreme care in prescribing drugs and one of them noted that he was comfortable with the following similar names for prescription drugs in Australia: Zinnat and Zinvit, Avanza and Avandia, Anaprox, Aropax and Aprinox, Livial and Livalo.
- It is not uncommon in the pharmaceutical industry in Australia for drugs to bear a similar sounding and looking name and it is not usual for professionals in that industry, to assume those similar products are manufactured or distributed by the one company.
- Prescription drugs are not likely to be confused with each other even when they are sold under a mark which is similar sounding or looking to a mark of another drug.
As a further point, in the present case, the pharmaceuticals under consideration are prescription drugs which are likely to be administered, intravenously by a trained professional. It is likely that a medical professional would take extreme care in that environment and that cases of confusion are likely to be rare.
Although the specification of both parties could extend beyond prescription and drugs the history of use of REMICADE was restricted to a small and select market.
The Office believed REMICADE had a significant reputation but that consumers would be unlikely to become confused and wonder whether there is a connection between the goods of the parties.
While the decision is restricted to specific goods and professionals, it restates existing law. It would seem logical to extend the reasoning to other situations of specialised goods/services delivered to a sophisticated client base. For example, expensive and specialised medical, diagnostic and therapeutic equipment provided to hospitals, diagnostic laboratories and similar entities would be arguably subject to the same parameters. This logic should also flow beyond medical practice to any environment in which great care is taken because of the nature of the goods or services, whether because of specificity of operation, cost of purchase and/or safety issues.