Australia: INN stem objections - still a case by case proposition

Australian objections to registration of pharmaceutical trade marks based on the inclusion of an International Non-Proprietary Name (INN) stem in the mark, remain a concern for trade mark applicants following a recent hearings decision.

Three earlier cases had found in favour of the trade mark applicants suggesting a significant change in the assessment of pharmaceutical trade mark applications. However, the latest decision suggests that any change in practice may not be as great as some applicants had hoped.

Ceva Sante Animale ("Ceva Sante") sought protection in Australia of an International Registration for the trade mark SYNCROSTIM for "veterinary products" in class 5.

The SYNCROSTIM trade mark was examined and IP Australia raised a ground for objection under Section 43, which provides:

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.

The basis for the objection was that the trade mark contains the suffix –STIM, which is listed as an INN stem used to indicate that the pharmaceutical preparation incorporates colony stimulating factors. The Examiner contended that use of the trade mark for goods not containing such a substance would be likely to mislead or confuse consumers.

As is standard practice, the Examiner invited Ceva Sante to agree to a condition of registration limiting its use of SYNCROSTIM to goods containing substances belonging to the pharmacological group designated by the INN stem –STIM. Submissions were filed but failed to overturn the objection and Ceva Sante elected to be heard before a delegate of the Registrar of Trade Marks.

In earlier INN stem decisions concerning the trade marks ZELCIVOL (-OL), SERAQUIN (-QUIN) and CELOMID (CEL-) respectively, the delegates had found that similar conditions of registration should not be required. They referred to the policy objectives inherent in the Act as explained by the courts and stated:

The purpose of the current Act was given judicial consideration by French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [47]:
The policy of the 1995 Act can be said to some extent to have shifted the balance of the objectives of trade mark law more towards the identification and protection of commercial products and services than the protection of consumers, although the latter remains an objective. In respect of deceptive trade marks the interests of consumers are also protected by comprehensive Federal and State laws relating to conduct which is misleading and deceptive or likely to mislead or deceive.
In other words, the Trade Marks Office is not an enforcement agency and other government bodies are better placed to assess and address instances of deception in the marketplace. Consequently, a ground under Section 43 will exist only where there is a real tangible danger of deception or confusion arising from a connotation within a trade mark.

In this context, Examiners are required to consider whether the presence of an INN stem in a trade mark is "meaningful" enough to give rise to a connotation sufficient to lead to deception or confusion.

The Woolworths case mentioned above also affirmed that there is to be a presumption of registrability during examination, and in opposition decisions it has been clear that strong evidence is needed to support an opposition based on s43. However, official objections to pharmaceutical trade mark applications under s43 appear to have little or no evidentiary basis.

In the earlier hearings decisions, the hearings officers considered as relevant factors such as: " use of the relevant stem by other traders;

  • the state of the Register;
  • acceptance in other countries;
  • the maturity of the Australian marketplace and the regulatory regime within that marketplace; and
  • the availability of comprehensive Federal and State laws relating to conduct which is misleading or deceptive or is likely to mislead or deceive.

After assessing the applications in the context of these factors, it was decided in each of those cases that a condition of registration was not required.

In the SYNCROSTIM case, the applicant provided evidence of:

  • parties using marks containing the part word STIM on veterinary products that do not contain a colony stimulating factor, and evidence of regulatory approval being granted for the sale of such products;
  • the state of the Register with respect to Class 5 marks, showing a significant number of unrestricted registrations for marks containing the suffix –STIM, or otherwise containing the part word STIM; and
  • information concerning registration in other countries.

The applicant argued that there is no evidence that persons will not recognise the suffix –STIM as being an INN stem, or understand it as having an INN stem meaning. It was pointed out that the suffix STIM is derived from the word "stimulate". Since all veterinary pharmaceuticals "stimulate" a beneficial reaction within an animal's body, it was stated that persons may reasonably view that part word in the trade mark as alluding to a product that stimulates reaction. It was also pointed out and acknowledged that generic names identifying the active ingredient in the product appear separately on the packaging of veterinary pharmaceuticals.

Although there was no contrary evidence, the hearings officer nevertheless concluded that relevant consumers would recognise the INN stem –STIM and be confused if the product did not contain substances belonging to the pharmacological group designated by the INN stem –STIM.

The practical outcome of such decision is that while applicants will not be prevented from using such marks, they may not be allowed the protection of a trade mark registration. No INN stem objection has yet been the subject of review by the courts.

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions