Pharmaceutical brand owners have cause to celebrate
following a recent decision regarding the trade mark applications
for marks incorporating INN stems in class 5.
Brand owners in the pharmaceutical space have cause to celebrate
after a decision of Hearing Officer Ian Thompson, in the
Boehringer Ingelheim case. The case involved a trade mark
application for the mark ZELCIVOL in relation to pharmaceutical
preparations in class 5.
As is commonly the case, the registry rejected the case on the
basis that the mark contained an INN stem for goods that don't
contain "phenols" or "alcohols". It was
considered the mark would be likely to deceive or cause
Boehringer refused to enter an endorsement against its
application and took the matter to a hearing. The Hearing Officer
considered a number of arguments and particularly first looked at
the current office practice at the Australian Trade Marks Office in
relation to marks containing INN stems. The practice looks at
whether the stem is a meaningful contribution to the mark and
whether it may be perceived as a stem within the context of the
The Trade Marks Office Manual provides examples of where the INN
stem is meaningful such as EXIFLURANE in which FLURANE is an INN
stem. There are also examples of where the mark does not contain
the stem in a meaningful way such as PAIN GOES FAST in which AST is
an INN stem. The objection wouldn't be raised in those
After considering the manual and the practice, Hearing Officer
Thompson considered the arguments of Boehringer. He was taken by
the arguments that there are many marks on the register and in the
market itself that contain OL that do not accord with the INN stem.
There were examples such as TYLENOL and SORBITOL in evidence.
The Hearing Officer also took into account the fact that OL
would be seen as a diminutive within the context of the ZELCIVOL
mark as a whole. That is, it would look like a pharmaceutical name
but not as indicating the type of pharmaceutical product. The
Hearing Officer also took into account the fact that the
international registration that Boehringer had filed had not
received the same objection in various other territories and that
was also the case with various national registration in other
territories. All in then, the Hearing Officer decided that no
endorsement should be entered against Boehringer's
The decision is a welcome one for the pharmaceutical community.
There have been a lot of inconsistent decisions from the Trade
Marks Office in relation to marks containing INN stems. Of course
the fact that this decision has been made on these particular facts
doesn't mean that every mark containing an INN stem will not be
accepted without an endorsement.
Consideration should be given to the particular factors that the
delegate took into account in this case. Having said that the
decision provides you with an opportunity to have another go in
cases where an INN stem objection has been raised in cases where
applications have been rejected, new filing should be considered.
In live cases perhaps it is a time for another round of submissions
to the office referring to the Boehringer case.
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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