Recent decision shows that INN stem objections are still a case-by-case proposition

Australia

Australian objections to registration of pharmaceutical trademarks based on the inclusion of an international non-proprietary name (INN) stem in the mark remain a concern for trademark applicants following a recent hearings decision.

Three earlier cases had found in favour of the trademark applicants, suggesting a significant change in the assessment of pharmaceutical trademark applications. However, the latest decision, Ceva Sante Animale ([2013] ATMO 27, May 3 2013), suggests that any change in practice may not be as great as some applicants had hoped.

Ceva Sante Animale sought protection in Australia of an international registration for the trademark SYNCROSTIM for “veterinary products” in Class 5 of the Nice Classification.

The SYNCROSTIM mark was examined and IP Australia raised a ground for objection under Section 43 of the Trademarks Act 1995, which provides:

"An application for the registration of a trademark in respect of particular goods or services must be rejected if, because of some connotation that the trademark or a sign contained in the trademark has, the use of the trademark in relation to those goods or services would be likely to deceive or cause confusion."

The basis for the objection was that the trademark 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 trademark 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 trademarks.

In earlier INN stem decisions concerning the trademarks 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 Trademarks 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 trademark 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 trademarks 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 Trademarks 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 trademark.

In this context, examiners are required to consider whether the presence of an INN stem in a trademark 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 Section 43. However, official objections to pharmaceutical trademark applications under Section 43 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 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 trademark 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 trademark registration. No INN stem objection has yet been the subject of review by the courts.

Sean McManis and Kathy Mytton, Shelston IP, Sydney

Sean McManis represented the applicant in this case

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