Common sense prevails - good news for brands incorporating INN stems

A recent decision from the Australian Trademarks Office may signal a welcome change in practice as regards trademark applications for marks incorporating international non-proprietary name (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 Trademarks Office has been to raise an objection under Section 43 against a trademark 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 stem); and
• 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 whole.

However, the assessment of whether the stem is meaningful on the part of the Trademarks Office is largely subjective, and has led to inconsistent decisions. As the number of pharmaceutical marks and INN stems has grown, this has led to a major headache for brand owners in the pharmaceutical space.

In the present case, Boehringer Ingelheim International GmbH’s application for ZELCIVOL faced a Section 43 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 OL”.

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 trademarks 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 international registration for ZELCIVOL had not raised objection on the basis of equivalent provisions.

Of course, the ruling does not mean that any Class 5 mark containing an INN stem will sail through without issues based on Section 43.

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 trademarks register that contain the stem (and for goods do not accord with the INN stem);
• the length of the stem (shorter stems - two or three 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 lapsed.

Bill Ladas, Corrs Chambers Westgarth, Melbourne