ONCE WEEKLY descriptive for medicines

In an appeal from a refusal to register, the Israel adjudicator of patents, trademarks and designs has ruled that the English word mark ONCE WEEKLY and its Hebrew translation (hereinafter both referred to as the marks) are not registrable because they lack distinctive character and relate directly to the character or quality of the goods concerned (Applications 156076 and156077, June 14 2007).

The applicant, Merck Sharp & Dohme (Israel-1996) Company Limited, filed in 2002 applications for registration of the marks for "pharmaceutical preparations for the treatment and prevention of bone diseases" in Class 5 of the Nice Classification. The examining attorney refused registration of the marks, stating that they relate directly to a quality or characteristic of the goods, namely the medicine is characterized by the fact that it need be taken only once a week.

On appeal to the adjudicator, Merck argued that the marks are suggestive rather than descriptive, because the words refer only to the recommended frequency of the dosage and not to the goods themselves. Further, in order to prove that the marks had acquired distinctiveness among the relevant population (namely, doctors, pharmacists, and patients), Merck brought 12 different declarations from doctors in hospitals throughout the country, together with the results of a professional survey.

Merck further pointed to the following:

• ONCE WEEKLY is in fact a "linguistic distortion" of the usual syntactical form. Accordingly, it should be perceived as fanciful and therefore inherently distinctive.
  
  
• Giving Merck exclusivity in the marks will not impair the ability of others to describe the same frequency of dosage in different ways, such as 'weekly', 'only once a week', 'once in a week', and the like.
  
  
• At the least, the marks are merely suggestive because ONCE WEEKLY describes the frequency of an action without indicating what action is required.
  
  
• The marks have become distinctive by virtue of having acquired secondary meaning within the relevant population due to extensive marketing efforts.

The adjudicator ruled that the marks are so descriptive that they are not suitable for registration. The adjudicator stated that even if it could be "proved" that the marks had acquired secondary meaning, no person should be given a monopoly over these words, whereby such a monopoly would deny others the right to use the terms in the ordinary course of commerce.

A mark lacks distinctive character if it is (i) common to the trade, or (ii) open to the trade, even if it is not actually used per se for commerce. The marks (in English and Hebrew form) are words that describe a fundamental characteristic of the product, namely that the medicine need be taken only once a week. Thus, in relation to the pharmaceutical product, the description of this once-in-a-week dosage on the packaging creates an immediate connection between the marks and the product. The adjudicator rejected Merck's claim that ONCE WEEKLY is in fact syntactically unusual. The test is materiality; not every linguistic deviation from the norm confers registrability.

In obiter, the adjudicator mentioned that only slight weight should be attributed to the survey evidence. There are accepted principles for conducting surveys. In this case, the survey questions were phrased in a way that biased the responses.

Neil Wilkof and Shir Uzrad, Herzog Fox & Neeman, Tel-Aviv