Boehringer Ingelheim International GmbH

This matter concerned an application for the protection of an International Registration Designating Australia (IRDA) by Boehringer Ingelheim International GmbH. The dispute centred on whether the suffix "-OL" within the proposed trade mark ZELCIVOL would be likely to deceive or cause confusion, thereby attracting the prohibition under section 43 of the *Trade Marks Act 1995* (Cth). The hearing officer, Iain Thompson, was tasked with determining the registrability of the IRDA.

The primary legal issue before the hearing officer was to assess whether the suffix "-OL", when used in conjunction with the prefix "ZELCIV-", would be apprehended by the ordinary person as an International Nonproprietary Name (INN) stem, specifically relating to alcohols or phenols, to such an extent that its use as a trade mark would be likely to deceive or cause confusion. This involved considering the prominence and distinctiveness of the suffix within the context of the entire trade mark and the broader pharmaceutical market.

The hearing officer reasoned that while "-OL" is an INN stem, its use in ZELCIVOL would not likely lead to deception or confusion. This conclusion was based on several factors: the suffix is short and not prominently pronounced in the word; it is familiar in general English usage and unlikely to immediately connote complex chemical products; and it is not immediately meaningful to the buying public as indicating alcohol or phenol. Furthermore, the prefix "ZELCIV-" does not conform to the usual naming conventions for alcohols or phenols, making the suffix less specific in this context. The hearing officer also noted the widespread use of "-OL" in Australia for pharmaceuticals not related to alcohols or phenols, the maturity of the Australian marketplace, and the existing regulatory regime, all of which mitigate the risk of deception.

Accordingly, the hearing officer determined that the section 43 ground should not be raised and accepted the IRDA for possible protection.