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:
Marks that incorporate INN stems in a meaningful way:
EXIFLURANE (-flurane is an INN stem), TRIPTOMYCIN (-mycin is an INN
Marks where the INN stem is not incorporated
in a meaningful way: PAIN GOES FAST (-ast is an INN stem). In this
example, the stem is overwhelmed by the meaning of the mark as a
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
BOEHRINGER INGELHEIM INTERNATIONAL GMBH'S APPLICATION FOR
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
Boehringer requested a hearing.
In finding that the mark should be registered without an
endorsement, the Hearing Officer took into account:
The fact that –OL is in "widespread use in
Australia in relation to pharmaceuticals which do not accord in any
way with the connotation in the INN-stem". This was based
on a consideration of the state of the Australian trade marks
register and also brands in the market. Reference was made to
brands such as ABDOL, TYLENOL, ROXANOL and ACCUSOL, which do not
accord with the OL stem.
The fact that –OL is short in the context of the mark
ZELCIVOL (and that, in the context of the mark, the more logical
and recognisable suffix was –VOL). He agreed that –OL
in Boehringer's mark was a "diminutive" used
"to signify that the goods are pharmaceuticals, rather
than a particular kind of pharmaceutical".
The fact that other countries designated by Boehringer's IR
for ZELCIVOL had not raised objection on the basis of equivalent
Of course, the ruling does not mean that any class 5 mark
containing an INN stem will sail through without issues based on
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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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