INN stem decision gives guidance to pharma trade mark applicants

Boehringer Ingelheim International GmbH [2012] ATMO 117

Registrar's delegate Iain Thompson has given guidance to pharmaceutical brand owners in Boehringer Ingelheim International GmbH [2012] ATMO 117 in his decision to withdraw a section 43 objection to acceptance of Boehringer Ingelheim International GmbH's ("Boehringer") ZELCIVOL trade mark in respect of "Pharmaceutical preparations" in class 5.

The purpose of a trade mark is to distinguish the goods or services of one trader from those of another. International Non-Proprietary Names (INNs), are recognised generic names for particular pharmaceutical substances. As explained by IP Australia in its examination reports, an INN stem "...indicates which pharmacological group a pharmaceutical substance belongs to".

Section 43 of the Trade Marks Act 1995 (Cth) provides that "An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion".

Determining whether a trade mark connotes an INN will depend on the individual circumstances of the case. However, the presence of an INN stem in a trade mark will need to be considered "meaningful" or significant enough to give rise to a connotation leading to potential deception or confusion.

The ZELCIVOL trade mark was examined in the usual course and IP Australia raised a ground for rejection on the basis that the trade mark contained the suffix "-OL" being an INN stem indicating alcohol or phenol derivatives. The Australian Examiner contended that if the ZELCIVOL trade mark was used by Boehringer for goods or services not containing or relating to alcohol or phenol, it would be likely to mislead or confuse Australian consumers.

Boehringer was afforded an opportunity to overcome IP Australia's objection by agreeing to enter an endorsement "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" to its application. Instead of agreeing to enter the endorsement suggested by the Examiner, Boehringer elected to argue the point and be heard before a delegate of the Registrar of Trade Marks.

In support of its contention that the suffix "-OL" was not "meaningful" or significant enough to give rise to a connotation leading to deception or confusion, Boehringer drew the Delegate's attention to a number of factors including that:

• the suffix "–OL" is a two letter suffix in an eight letter word and therefore not prominent;
• the state of the Australian Trade Marks Register where a number of trade mark registrations including the INN-stem "–OL" co-existed;
• a number of pharmaceutical preparations that contain the suffix –OL were not alcohols or phenols;
• trade mark protection had been achieved for ZELCIVOL in respect of pharmaceutical preparations in a number of other countries without the requirement of any endorsement;
• the supply of pharmaceutical preparations/products in Australia is highly regulated and accordingly the use of ZELCIVOL on pharmaceutical preparations other than those containing alcohol or phenol would be unlikely to deceive or cause confusion; and
• the suffix –OL had been deleted from the World Health Organization list of official INN stems since 2000.

In holding that the ZELCIVOL trade mark should be accepted for registration, Delegate Thompson noted that an INN stem in a trade mark will not be considered "meaningful" enough to give rise to a connotation leading to potential deception or confusion where most of the following factors are present:

• the suffix is in common use other than in its INN-stem connotation, as demonstrated by both the state of the Australian Trade Marks Register and in the Australian marketplace;
• the INN-stem is two or three letters long;
• there are other or alternative obvious suffixes present in the trade mark (in this case the Delegate noted that the relevant suffix could have also been "-VOL"; and
• the INN-stem would not be understood to indicate only a particular kind of pharmaceutical because the 'prefix' does not conform with the usual formulation specific to the INN-stem under consideration.

Take Away

Although IP Australia's past practice in relation to INN-stem based objections has been somewhat inconsistent, the Boehringer decision stands as an important precedent in relation to the treatment of section 43 objections to acceptance. Delegate Thompson's decision serves to assist in determining what pharmaceutical trade marks will be able to be registered in Australia in the future.

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