Boehringer Ingelheim International GmbH

[2012] ATMO 117

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:International Registration Designating Australia No. 1042049 – Australian trade mark application number 1373176(5) - ZELCIVOL- in the name of Boehringer Ingelheim International GmbH.

Delegate:	Iain Thompson
Representation:	Applicant: Karen Sinclair, Patent & Trade Mark Attorney, Principal of Watermark Intellectual Asset Management
Decision:	2012 ATMO 117 Reg 17A.17(2)(d) proceedings: s43 ground where trade mark International Non-proprietary Name - discussion of when s43 grounds should be raised, trade mark to proceed to registration.

Background

1. This is a decision under regulation 17A.17(2)(d) of the Trade Marks Regulations 1995 (‘the Regulations’) as provided for by section 189A of the Trade Marks Act 1995 (‘the Act’).  Boehringer Ingelheim International GmbH (‘the Holder’) requested protection in Australia for the following international registration designating Australia (‘IRDA’):

   Application No:           1373176
   IR No:    1043049
   Convention Priority:     25 January 2010 (Germany)
   Filing Date:                  1 June 2010
   Goods:  Class 5: Pharmaceutical preparations

   Trade Mark:                ZELCIVOL

2. As provided for by regulation 17A.16, the IRDA was examined and an examiner of trade marks raised a ground for rejection in the following terms:

   Grounds for rejecting this IRDA exist under the provisions of section 43 of the Trade Marks Act.

   A trade mark is used to distinguish the goods or services sold by one trader from those sold by other traders. A trade mark will be difficult to register if its use would be likely to be deceptive or cause confusion. This would usually be because of some meaning or implication the trade mark has in relation to the goods or services being claimed. (For more details, see Section 43 of the Trade Marks Act 1995.)

   Your IRDA is, or contains, [the suffix] -OL.  This is an INN stem. INN stems are parts of International Non-Proprietary Names (INNs), which are recognised generic names for particular pharmaceutical substances. An INN stem indicates which pharmacological group a pharmaceutical substance belongs to.

   The INN stem OL indicates ALCOHOL or PHENOL derivatives.

   If your trade mark is used for goods or services not containing or relating to this substance, it is likely to mislead or confuse consumers.

   The refusal applies to the following goods/services:

   All the goods claimed in Class 5

   You can overcome this problem by agreeing, in writing, to add this endorsement to your application:

   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

   You may respond to this refusal by:

   ·    Making submissions and/or

   ·    Requesting a hearing.

3. The Holder elected to be heard and the hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 19 September 2012.  The Holder was represented by Ms Karen Sinclair, Patent & Trade Mark Attorney, a Principal of Watermark Intellectual Asset Management, who also provided a written summary of her submissions.

   Section 43

   Background to Registrar’s practice

4. Section 43 of the Act provides:

   Trade mark likely to deceive or cause confusion

   43. 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.

5. The ground is one which states that the trade mark connotation may be deceptive because the suffix –OL is listed as an International Non-Proprietary Name (‘INN’) which indicates that the goods are, or contain, alcohol or phenol or their derivatives and would deceive or confuse if affixed to goods other than those so connoted.

6. The Registrar’s practice in the examination of applications which contain potentially misdescriptive matter has evolved from the previous examination practice under the superceded Trade Marks Act 1955 (‘the Old Act’). Under the Old Act, for example, an application to register the trade mark ORLWOOLA, for ‘clothing’, would attract a requirement that either the goods be restricted to ‘clothing made of wool’ or that an endorsement entered onto the registration to the effect that, “It is a condition of registration that the trade mark will only be used on clothing made from wool’: see, for example, Re Trade Mark “Orlwoola “ (1909) 26 RPC 850 (C.A.).

7. The purpose of the current Act was given judicial consideration by French J in Registrar ofTrade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; (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 or deceptive or likely to mislead or deceive.

8. 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. However, the interaction of trade marks and public health issues are a concern of the Registrar.

9. The World Intellectual Property Office (‘WIPO’) encourages its member States (such as Australia) to adhere to a practice whereby trade marks which consist solely of INNs used on pharmaceuticals are not registered as trade marks and of ensuring that where ‘INN-stems’ (such as ‘-abine’ or ‘-cillin’) appear in a trade mark application that any registration which ensues is not potentially misdescriptive.  WIPO publication SCT/16/3 describes the issue thus:

   With the growing number of INNs and trademarks, the possibility of conflicts between them has gradually increased.  The main source of conflict is usually an attempt by a manufacturer to propose a new trademark containing “stems”, which are word elements established in the INN system to demonstrate the relationship between pharmacologically related substances.  By the use of common “stems” the medical practitioner can recognize that the substance belongs to a group of substances having similar pharmacological activity.  To prevent conflicts between INNs and trademarks, the World Health Assembly Resolution WHA46.19 was issued in 1993, requesting the Member States of WHO to develop policy guidelines on the use and protection of INNs, and to discourage the use as trademarks of commercial names derived from INNs and, particularly, names including established INN “stems”

10. Accordingly, the Australian Trade Marks Office has developed guidelines on the examination and registration of INNS and INN-stems.  This practice is promulgated in the Trade Marks Examination Manual (Part 29, paragraph 4.3):

    Examining marks containing INNs and INN stems

    When examining applications for registration of trade marks in class 5 covering pharmaceuticals, veterinary substances or pesticides, examiners should check the trade mark against the INN list using the Search for International Nonproprietary Names for Pharmaceutical Substances and the list of INN stems found at Annex 2 in this Part of the Manual.

    Grounds for rejection under section 43 can apply to trade marks containing or consisting of INNs or INN stems (or marks that may connote an INN or INN stem) that are to be used in relation to pharmaceuticals, veterinary substances or pesticides.

    Section 43 Grounds for rejection in relation to INNs

    Grounds for rejection under section 43 exist where a trade mark or part of a trade mark to be used in relation to pharmaceuticals, veterinary substances or pesticides is the same as, or may connote, a notified INN and the goods covered by the specification are not restricted to the particular substance indicated by the INN. Use of such a mark would be likely to give rise to deception or confusion.

    Determining whether a non-identical mark connotes an INN will depend on the particular circumstances of the case. However, if a mark is an obvious derivation of an INN, a connotation is likely to exist, see Aventis Pharma v Alphapharm Pty Ltd (2005) 65 IPR 634 (TM ROXIMYCIN and INN ROXITHROMYCIN).

    Section 43 objections may be overcome by agreeing to a condition of registration limiting use of the trade mark when used in relation to pharmaceuticals, veterinary substances and pesticides. The endorsement suggested by the Registrar in these circumstances is:

    It is a condition of registration that any use in respect of <relevant goods> will be in relation to such goods containing the substance designated by the International Non-Proprietary Name <INN>

    However such an endorsement is unlikely to assist in overcoming grounds for rejection which have been raised for other reasons (e.g. under section 41 or section 44 of the Trade Marks Act 1995).

    Section 43 Grounds for rejection in relation to INN stems

    Grounds for rejection under section 43 exist where a trade mark to be used in relation to pharmaceuticals, veterinary substances or pesticides consists of an INN stem, or contains a notified INN stem in a meaningful way, and the goods covered by the specification are not restricted to substances indicated by the INN stem. Use of such a mark would be likely to give rise to deception or confusion. Objections may be overcome by agreeing to a condition of registration limiting use of the trade mark when used in relation to pharmaceuticals, veterinary substances and pesticides. The endorsement suggested by the Registrar in these circumstances is:

    It is a condition of registration that any use in respect of <relevant goods> will be in relation to such goods containing substances belonging to the pharmacological group designated by the International Non-Proprietary Name stem <stem>

    Meaningful INN stems

    An examiner will need to consider whether the presence of an INN stem in a word is “meaningful” enough to give rise to a connotation leading to potential deception or confusion under section 43.

    Some INN stems consist of simple two letter combinations and their presence in a larger word may not be meaningful and would not lead to a possibility of deception or confusion. For example, the presence of ‘aj’ in the term ‘Sansajabendorastine’ is not significant enough to warrant objections given the length of the name and other competing references such as ‘astine’. By way of contrast the appearance of ‘aj’ in ‘tenaj’ would more clearly give rise to a section 43 ground for rejection. Other examples of INN stems included in a meaningful way include:

    -flurane         EXIFLURANE

    -mycin           TRIPTOMYCIN

    estr               PREMIUMESTREMAX

    In addition, a stem may not be included meaningfully in a mark where its presence is clearly overwhelmed by the meaning of the mark as a whole. Examples of INN stems not included in a meaningful way include:

    -ast               PAIN GOES FAST

    -quin(e)         HAPPY EQUINE

    som-             SOMALIAN ALOE

    sal                 SMILING SALLY

11. Clearly, between the extremes of –mycin/TRIPTOMYCIN and –quin(e)/HAPPY EQUINE there fall some trade marks which are in a ‘grey area’ such as the trade mark here under consideration (ZELCIVOL) and which are not fully addressed in the guidelines above.

    Holder’s Submissions

12. Ms Sinclair made submissions that focused on:

    ·the state of the Australian register

    ·the history of this IRDA elsewhere in the world

    ·the status of the INN-stem –OL

    ·the application of the official guidelines

    ·the state of the marketplace.

13. Ms Sinclair tendered the results of a search of the Australian trade marks register with a sample period of 1 January 2011 to 31 August 2012.  The search identified ten entries[1] which are:

    [1] 1452500(5) LEPICOL; 1442599(5) NORFENICOL; 1442320(5) BISLOL; 1438059(5) FLUANXOL; 1429933(5) Provicol; 1428037(5) PHYTOFOL; 1426798(5) Abigenol; 1407340(5) XSOL; 1403889(5) PANTOZOL HEARTBURN RELIEF; and, 1400607(5) ESOMESOL.

    ·invented words ending with the suffix –OL

    ·registered or protected

    ·both Australian originating and overseas originating registrations

    ·both direct filed and Madrid Protocol applications

    ·in respect of goods explicitly including pharmaceutical preparations/products

    ·unrestricted as to the chemical nature of the pharmaceutical preparations/products

    ·absent any endorsement as to the chemical nature of the pharmaceutical preparations/products

    ·with the exception of two entries, subject to no objection during examination as to registrability

14. Ms Sinclair submitted that protection has been extended to IRDA 1373176 in Belarus, Switzerland, China, OHIM (the European Community including the United Kingdom), Japan, South Korea, Norway, Russia, Singapore, Turkey and Ukraine.  No restrictions have been made to the statements of goods, and no endorsements have been required.  Further, the trade mark ZELCIVOL is also registered in, inter alia, Germany (the priority founding registration), India, the Philippines, the United States of America and Canada.  Ms Sinclair stated that no endorsements have been entered on these registrations.  I note, however, that examination of trade marks does not occur in at least some of the countries mentioned by Ms Sinclair.

15. Ms Sinclair observed that in respect of the United Kingdom, the United States and Canada, if not elsewhere in Western Europe, Japan and Singapore, the market for pharmaceutical preparations/products is analogous to that in Australia. That is, the market is relatively wealthy, sophisticated, educated and the supply of pharmaceutical preparations/products is highly regulated.

16. Ms Sinclair submitted that according to the 2009 edition of the World Health Organization (WHO) publication ‘The use of stems in the selection of International Nonproprietary Names (INN) for pharmaceutical substances4 (Annex F), the stem –OL ‘was formerly used, but [is] no longer formally acknowledged by the INN programme’ having been deleted from the General Principles in the 14th Report (dated 2000). This publication is updated every two years.

17. Ms Sinclair argued that because the suffix –OL has been deleted from the WHO list of official stems since 2000 this is a relevant consideration to the registrability of the IRDA since it is evident that in deleting the stem, the WHO no longer regards the stem as identifying any particular pharmaceutical substance or active pharmaceutical ingredient, nor that it is a unique stem that is globally recognized and is public property.  And further, that medical practitioners, pharmacists, scientists or anyone dealing with pharmaceutical products no longer recognise that a substance having that suffix belongs to a group of substances having similar pharmacological activity

18. Ms Sinclair drew my attention to the guidelines in the Trade Marks Examination Manual and submitted that test is in the perception of the ordinary person[2] and must be immediate.  Health professionals are, she submitted, commonly involved in the purchase of pharmaceutical preparations.  The ‘buying public’, the end user, is careful about their purchase and is, if not at the complete direction of their prescribing doctor, often guided by a pharmacist.  In Australia, pharmaceutical preparations are heavily regulated.  Most pharmaceutical preparations are only available by prescription or are kept “behind the counter” so that the buying public is unable to access the product without professional guidance.  Both medical professionals and pharmacists are highly trained in the prescription and dispensing of pharmaceutical preparations.  They are familiar with the concept of brand names and generic names for pharmaceutical preparations.  They are unlikely to be deceived or confused merely by the brand name of a product since it will always be present in addition to a generic description of the product when the product is supplied to the end user.  I note, however, that the submission is a two-edged sword in that, being highly trained, health care professionals are more likely to recognise, and rely on, both INNS and INN-stems and thus be deceived when the INN or INN-stem relied upon does not concur with the nature of the substance.

    [2] The ‘ordinary person’ test is not mentioned in the Trade Mark Examiner’s Manual.

19. Ms Sinclair went on to submit:

    Very many pharmaceutical preparations exist that contain the suffix –OL but are not alcohols or phenols:

    •       ABDOL – diclofenac

    •       TYLENOL – paracetamol

    •       SORBITOL – sorbitol crème

    •       ROXANOL – morphine

    •       SOTRADECOL – tetradecyl sulfate

    •       SULFATOL – sulfacetamide

    •       PANADOL – paracetamol[3]

    •       ACCUSOL – calcium chloride

    Medical professionals cannot form an immediate impression that a pharmaceutical preparation which has a brand name ending in the suffix –OL will contain an alcohol or phenol because they are frequently confronted with pharmaceutical preparations that end in a like manner and yet themselves do not include an alcohol or phenol. It is unlikely that they will therefore be deceived or confused in the manner suggested.

    [3] I note the presence of the INN-stem –ADOL indicating an analgesic.

20. Ms Sinclair concluded by observing that in the context of the IRDA the suffix –OL is:

    ·a two letter suffix in an eight letter word and therefore not prominent.

    ·not pronounced in the word in the same way as the INN stem, and therefore not prominent or obvious.

    ·familiar to the ordinary person as a result of its inclusion in other words in the English language and therefore unlikely to immediately connote complex chemical products.

    ·not immediately meaningful to the “buying public”, or their advisers in respect of pharmaceuticals as being associated with alcohol, or the more obscure chemical, phenol, and therefore unlikely to be a real and obvious danger.

    Consideration

21. A preliminary consideration is to observe that, contra-intuitively, discontinuance and removal of an INN-stem from the official list of INN-stems does not stop it being an INN-stem.  Dr Raffaella G. Balocco Mattavelli who is Manager of the International Nonproprietary Name (INN) Programme, Quality Assurance and Safety, Medicines Department of Essential Medicines and Pharmaceutical Policies at the World Health Organization has advised the Australian Trade Marks Office that:

    A stem never “dies”, as an INN and never looses [sic] the protected status. However for different reasons, the INN Experts decided over the years not to use anymore a certain stem, namely to discontinue. This stem may then have been removed from the short “example” list of stem attached to the General Principles.

22. Otherwise I am in general agreement with the thrust of Ms Sinclair’s submissions and believe that the following factors are pertinent here:

    a.the suffix –OL is in comparatively widespread use in Australia in relation to pharmaceuticals which do not accord in any way with the connotation in the INN-stem.  This widespread use is reflected by:

    i.the state of the Register

    ii.the marketplace.

    b.The suffix –OL is used by pharmaceutical manufacturers as a ‘diminutive’ to signify that the goods are pharmaceuticals, rather than a particular kind of pharmaceutical.

    c.The suffix –OL is short in the context of the IRDA under consideration and is not obviously being used as an INN-stem because the ‘prefix’ ZELCIV- does not conform to the usual formula for construction of names for either alcohols or phenols.

    d.The more logical suffix in the trade mark ZELCIVOL is –VOL, rather than –OL

    e.Other countries in which protection of the IRDA has been extended have not restricted the scope of the protection on this basis.

    f.Use of the trade mark on drugs other than those containing alcohol or phenol would be unlikely to deceive or cause confusion because of both the factors above and,

    i.the maturity of the Australian marketplace

    ii.the regulatory regime within that marketplace

    iii.the availability of comprehensive Federal and State laws relating to conduct which is misleading or deceptive or likely to mislead or deceive.

1. Accordingly, I consider that it is possible to extract the following general principles from the above considerations in addition to those stated in the Trade Marks Examination Manual.  Where most of the following factors are present:

   a.The suffix is in common use other than in its INN-stem connotation, as evidenced by both the:

   i.state of the Register; and

   ii.the marketplace

   b.The INN-stem is two or three letters long,

   c.There are other or alternative obvious suffixes present in the trade mark.  For example, the trade mark KACOL for ‘pharmaceutical preparations’ might (as well as containing the INN-stem –OL) be readily seen as KA- (signifying potassium) and the suffix -COL (bringing to mind either a colloid or a preparation for the treatment of cholesterol) OR the suffix KAC- (signifying ipecac) followed by the diminutive –OL; or for example, the trade mark KASAL might be viewed as having two alternative suffixes –SAL[4] or –AL (both of which are INN-stems)[5],

   d.The INN-stem is non-specific - that is, in the context of the trade mark under consideration the INN-stem would not be generally apprehended as indicating only a particular kind of pharmaceutical because the ‘prefix’ does not conform with the usual formulation specific to the INN-stem under consideration,

   the section 43 ground should not be raised as it is unlikely that the use of the INN-stem would deceive or cause confusion.

   [4] The part word ‘Sal’ has its own meaning in chemistry as indicating a salt.

   [5] Respectively indicating either aldehydes or a salicylic acid derivative.

   Decision

2. Having regard to all of the above, I will accept the IRDA for possible protection.

   Iain Thompson
   Hearing Officer
   Trade Marks Hearings
   30 November 2012