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
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  FCAFC 1020;  FCA1020; (1999) 93 FCR
365; (1999) 45 IPR 411;  AIPC 91-499 at :
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
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
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
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.
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