A recent decision from the Australian Trade Marks Office may signal a welcome change in practice as regards trade mark applications for marks incorporating INN stems in class 5.
Brand owners facing objections on this basis should review the decision and their portfolio, and consider taking steps to progress their own applications.
The practice of the AUTMO has been to raise an objection under s43 against a trade mark application covering pharmaceuticals, veterinary substances or pesticides in class 5, where the mark contains an INN stem, and to the extent that the specification is not restricted to the particular substance or substances indicated by the INN. This is on the basis that such a mark contains a connotation that would be likely to cause confusion.
The Examiner’s Manual notes that the issue of whether there is likely to be confusion should be considered based on the particular circumstances, and that consideration should be given to whether the stem is “meaningful” in the context of the mark (such that confusion is likely). Examples that are given in the Manual include:
However, the assessment of whether the stem is meaningful on the part of the AUTMO is largely subjective, and has lead to inconsistent decisions. As the number of pharma marks and INN stems has grown, this has led to a major headache for brand owners in the pharma space.
Boehringer’s application for ZELCIVOL faced a s43 objection during examination. The INN stem that formed the basis for the objection was “OL”, which indicates “alcohol” or “phenol” derivatives. It followed, according to the examiner, that if ZELCIVOL was used in relation to “goods or services not containing or relating to this substance” it would cause confusion. The examiner advised that the objection could be overcome if Boehringer agreed to the following endorsement: “It is a condition of registration that any use in respect of pharmaceuticals will be limited to such goods containing substances belonging to the pharmacological group designated by the International Non-Proprietary Name stem OL”.
Boehringer requested a hearing.
In finding that the mark should be registered without an endorsement, the Hearing Officer took into account:
Of course, the ruling does not mean that any class 5 mark containing an INN stem will sail through without issues based on s43.
The issue should be decided based on whether the overall effect of the mark is one likely to cause confusion, rather than based on a blanket rule. Based on the Boehringer case, factors to be considered will be the number of other names in the market and on the trade marks register that contain the stem (and for goods do not accord with the INN-stem), the length of the stem (shorter stems 2 or 3 letters long are more likely to be acceptably incorporated into marks), and whether the relevant aspect of the mark is obviously being used as an INN stem.
Brand owners facing objections from the Registry should re-assess their portfolios in light of the decision, and in pending cases refer the examiner to the Boehringer case if appropriate (together with evidence from the register and market as discussed above). Further, fresh filings should be considered for applications that have faced these issues in the past and that have lapsed.
Postscript: In a decision dated 31 January 2013 ( ATMO 8), Hearing Officer Alison Windsor held that Boehringer Ingelheim Vetmedica Gmbh’s application for SERAQUIN should be accepted in relation to veterinary preparations for dogs and cats, notwithstanding that it includes the INN stem “quin”. The reasons were, in her own words, “largely in accordance” with those in the decision of Iain Thompson relating to ZELCIVOL. It is understood that the AUTMO will update its practice manual in line with the two decisions shortly.
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