Boehringer Ingelheim Vetmedica GmbH

[2013] ATMO 8

TRADE MARKS ACT 1995

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

Re:Trade Mark Application 1485832(5) – SERAQUIN - in the name of Boehringer Ingelheim Vetmedica GmbH.

Delegate:	Alison Windsor
Representation:	Applicant:  Karen  J Sinclair of Watermark Patent and Trade Mark Attorneys
Decision:	2013 ATMO 08 Ex parte hearing: section 43 – deception and confusion caused by use of INN-stem in a trade mark for goods which do not accord with the INN-stem – market conditions to be considered - connotation within the trade mark not strong under the circumstances – ground for rejection withdrawn and application accepted.

Background

1. Boehringer Ingelheim Vetmedica GmbH (‘the Applicant) applied under the Trade Marks Act 1995 (‘the Act’) to register a trade mark details of which appear below:

   Application No:         1485832
   Filing date:                16 April 2012
   Divisional date:         24 March 2010 in respect of 1368182
   Goods:                      Class 5:  Veterinary preparations for dogs and cats
   Trade Mark:              SERAQUIN (‘the Trade Mark’)

2. The first official report raised grounds for rejecting the application as follows:

   Trade Marks which are likely to deceive or cause confusion

   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 trade mark is, or contains, [the suffix] QUIN.

   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.

   This particular INN stem indicates that your goods are or contain QUINOLINE 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.

   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 QUIN

3. On receipt of the report, the Applicant asked to be heard. 

4. As a delegate of the Registrar I heard the Applicant’s arguments at a hearing in Melbourne on 12 November 2012.  The Applicant 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

5. 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.

6. The objection is that the suffix –QUIN contained in the Trade Mark prima facie implies that the goods upon which the Trade Mark is used belong to a particular pharmacological group and thus that use of the Trade Mark for goods not within this group would be likely to deceive or cause confusion.  The suffix -QUIN (or –QUINE) is listed as an International Nonproprietary Name (INN) stem indicating that the goods upon which it is used consist of quinoline derivatives.  I will discuss exactly what these are later in this decision.

7. The background to the Registrar’s practice was discussed by a delegate in a recent decision: Boehringer Ingelheim International GmbH [2012] ATMO 117 (30 November 2012) (‘the ZELCIVOL decision’) from which the following is taken:

   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.).

   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.

   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.

   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”

   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

8. The delegate went on to say that between the extremes of –mycin/TRIPTOMYCIN and –quin(e)/HAPPY EQUINE there will be some trade marks which arguably fall into a ‘grey area’ and which are not fully addressed in the guidelines given above.

   Applicant’s submissions

9. The Applicant advised that it had filed International Registration no. 794230 via the Madrid Agreement on 13 December 2002, designating the Czech Republic, Hungary, Latvia, Poland, Slovenia and Slovakia.  The Registration claims priority from German trade mark registration no. 30043915, dated 7 March 2001.  It subsequently designated Estonia, Lithuania, the United States and Turkey.  It designated Australia under application 1368182 (‘the parent application’).

10. The parent application had applied for goods in classes 5 and 31.  Following an examiner’s report effectively identical to the one quoted previously, the Applicant elected to delete the class 5 goods from the parent application which was then granted protection.  The Trade Mark was filed as a divisional of the parent application for the goods in class 5 which had been deleted from the parent.

11. Ms Sinclair submitted the following:

    In respect of class 5 of the International Registration No. 794230, a Statement of Grant of Protection made under Rule 18 ter (1) has been issued in each of the countries of the registration, with the exception of Australia.  A restriction has been made to the class 5 statement of goods only in respect of the registration in the United States.  No endorsements have been required with the exception of in Australia.[1]

    SERAQUIN is also the subject of Trade Mark Registrations in Germany (the priority founding registration), Europe, Japan, Korea, Mexico, New Zealand and South Africa.

    In determining the registrability of a trade mark, the Examiner may give consideration to the registration of the trade mark in the United Kingdom and in other jurisdictions with similar registration requirements, provided that the circumstances are analogous.

    At least in respect of the United Kingdom, the United States and New Zealand, if not elsewhere in Western Europe, it is submitted that the market for veterinary pharmaceutical preparations/products is analogous to that in Australia.  That is, the market is relatively wealthy, sophisticated, educated and the supply of veterinary pharmaceutical preparations/products is highly regulated. 

    [1] In the USA, the goods specification in class 5 has been restricted to the following:  ‘veterinary preparations for the treatment of arthrogenous disorders for dogs and cats’.

12. She then went on to consider the state of the Australian trade marks register.  She said that a search of class 5 had identified 22 entries, unrestricted by date which could be characterised as:

    ·    invented words ending with the suffix –QUIN

    ·    registered or protected

    ·    originating both in Australia and overseas

    ·    both direct filed and Madrid Protocol filings

    ·    in respect of goods explicitly including pharmaceutical preparations/products and nutritional supplements

    ·    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.  

13. Ms Sinclair also pointed out that according to the 2011 edition of the World Health Organisation (WHO) publication ‘The use of stems in the selection of International Nonproprietary Names (INN) for pharmaceutical substances’ at Annex H, page 25, the stem –QUIN(E) ‘was deleted from the general Principles in List 26 prop. INN’.  Ms Sinclair said that as far as she could ascertain, this deletion appeared to have occurred in about 1974.  She noted that the quoted publication is updated every two years and that the deletion of the relevant stem is confirmed in a number of its Annexes.  In Annex J to the publication, she submitted that the suffix -QUINIL is identified as the relevant stem for ‘benzodiazepine receptor partial agonists (quinoline derivatives)’.

14. Ms Sinclair submitted that the fact that the suffix –QUIN(E) had been deleted from the WHO list of official stems is a relevant consideration as to the registrability of the Trade Mark since it is evident that in deleting the stem, the WHO no longer regards it as identifying any particular pharmaceutical substance or active pharmaceutical ingredient, nor that it is a unique stem that is globally recognised and is thus public property.  She also submitted that this removal of the stem from the official WHO list signals that the medical or veterinary 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.

15. Ms Sinclair drew my attention to the guidelines in the IP Australia’s publication Australian Trade Marks Manual of Practice and Procedure (‘the Trade Marks Examiner’s Manual’) and submitted the following:

    The Trade Mark Examiner’s Manual states that for an application to be rejected under section 43 the examiner must be clearly satisfied that use of the mark would be likely to deceive or cause confusion. The test is whether the relevant buying public would be deceived or confused. The Manual states that:

    ‘The prominence and context of the potentially deceptive or confusing element in the trade mark will be important in deciding whether the trade mark “is likely to deceive or cause confusion”.  For a ground for rejection to be raised the connotation must be obvious, direct, and immediate and within the trade mark itself….There must be a real and obvious danger of the buying public being deceived and/or confused by the secondary meaning within the mark.’

    The test is in the perception of the ordinary person and must be immediate.[2]

    Section 4.3.2 of the Trade Mark Examiner’s Manual states that:

    ‘Grounds for rejection under section 43 exist where a trade mark to be used in relation to pharmaceuticals ….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 the mark would be likely to give rise to deception or confusion ….’

    and

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

    [2] Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, referred to with approval by French J in the Woolworths Metro case, Registrar of Trade Marks v Woolworths (1999) 45 IPR 411

16. Ms Sinclair said that the Trade Mark is not substantially identical to the suffix –QUIN.  The word SERAQUIN is, she said, a conjugate or invented word with three syllables, SER-A-QUIN, and which breaks into two parts:  SERA and QUIN.  Each of the parts has at least one dictionary meaning and at least some of these would be known to the general public.[3]

    [3] SERA, according to means clear, pale-yellow liquid that separates from the clot in the coagulation of blood; immune serum; any watery animal fluid; the thin, clear part of the fluid of plants; milk whey.  QUIN means ‘one of five’.

17. She submitted that both veterinary professionals and pharmacists are highly trained in the prescription and dispensing of pharmaceutical preparations; that they are familiar with the concept of brand names and generic names for pharmaceutical preparations and that 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.  She also noted that the buying public in Australia is careful about their purchases and may, in any event, be purchasing the substances under the complete direction of their prescribing veterinarian.  This is largely because, in Australia, veterinary pharmaceutical preparations are heavily regulated and are most often only available by prescription or in controlled purchasing conditions such at the veterinary surgery.

18. Ms Sinclair provided copies of pages from the Applicant’s website which show that the Trade Mark is in use on goods in respect of which its registration is sought.  The particular product is a joint supplement for the treatment of arthritis in animals which includes the substances glucosamine, chondroitin and curcumin.

    Discussion.

1. As was pointed out in the ZELCIVOL decision discontinuance and removal of an INN stem from the official list of INN stems does not stop it being an INN stem.  The delegate went on to say:

   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.

2. The INN stem –QUIN(E) specifies that it is a reference to pharmaceuticals containing quinoline derivatives.  Wikipedia[4] gives the following information about quinoline:

   Quinoline is a heterocyclic aromatic organic compound with the chemical formula C₉H₇N. It is a colorless hygroscopic liquid with a strong odor. Aged samples, if exposed to light, become yellow and later brown. Quinoline is only slightly soluble in cold water but dissolves readily in hot water and most organic solvents. Quinoline itself has few applications, but many of its derivatives are useful in diverse applications. A prominent example is quinine, which is found naturally in plants as alkaloids. 4-Hydroxy-2-alkylquinolines (HAQs) are involved in antibiotic resistance.

   Quinoline is used in the manufacture of dyes, the preparation of hydroxyquinoline sulfate and niacin. It has also used as a solvent for resins and terpenes.

   Quinoline is mainly used as a feedstock in the production of other specialty chemicals. Approximately 4 tonnes are produced annually according to a report published in 2005. Its principal use is as a precursor to 8-hydroxyquinoline, which is a versatile chelating agent and precursor to pesticides. Its 2- and 4-methyl derivatives are precursors to cyanine dyes. Oxidation of quinoline affords quinolinic acid (pyridine-2,3-dicarboxylic acid), a precursor to the herbicide sold under the name "Assert"

   [4] Accessed on 30 January 2013.

3. It appears from Internet research that, as well as its use in the manufacture of dyes and other industrial substances, quinoline derivatives are commonly used in antimalarial drugs, antipyretic substances and antiseptics.  There is also recorded use as food preservatives as well as antiprotozoal and antifungal agents. 

4. As Ms Sinclair pointed out, there are a number of examples of registered trade marks in class 5 which have been allowed onto the register for broad and relevant goods claims but with no restriction to the nature of the goods at all.  My own Internet research into each of these names has revealed that the trade marks are used on a wide variety of different pharmaceutical substances.  A number of the substances are anti-bacterial agents for both veterinary and human pharmaceutical use; at least two are for substances to treat glaucoma; a number are specifically anti-malarial agents; three are for glucosamine and chondroitin food supplements for animals.  In addition, one of the substances is specifically designed for expanding plasma volumes in the patient and another is a fish oil supplement for animals. 

5. It appears that over at least the last thirty years products which have included the suffix –QUIN in their trade marks may have been sold on the Australian market for a diverse range of pharmaceutical and veterinary goods.  Included within these goods are some which are very similar in composition to those the Applicant intends producing.  Under these circumstances, I question whether the relevant market, especially the professional members of that market being medical practitioners, veterinarians and pharmacists, are likely to be confused by the use of the suffix in relation to goods which are not related to those associated with the (deleted) INN-stem.

6. The matter for my decision in this case is whether the application of the trade mark SERAQUIN to the Applicant’s goods, namely ‘veterinary preparations for dogs and cats’, is likely to cause deception or confusion if the goods are not restricted to those containing quinoline derivatives.  The question amounts to whether the presence of the suffix –QUIN in the Trade Mark creates the connotation of quinoline derivatives such that use of the Trade Mark (as a whole) on unrelated veterinary preparations is likely to cause deception or confusion. 

7. I believe that the following factors are relevant here:[5]

   [5] I note that these factors are largely in accordance with those noted by the delegate in the ZELCIVOL decision.

   ·    The suffix –QUIN is in relatively 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.information available in the marketplace.

   ·    Other countries in which protection has been extended to the Trade Mark have not restricted the scope of the protection offered in line with the requirements of the INN stem and a number of these countries have markets very similar to the local market.

   ·    Use of the trade mark on drugs other than those containing quinoline derivatives would be unlikely to deceive or cause confusion because of the factors above and because of

   o   the maturity of the Australian marketplace

   o   the regulatory regime within that marketplace

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

8. Given the above factors, I am satisfied that the connotation of quinoline derivatives is not a strong connotation within the Trade Mark (if it exists at all), and therefore the ground for rejection under section 43 is not viable.

   Decision

9. With the above matters in mind, I will accept the application for possible registration.

   Alison Windsor
   Hearing Officer
   Trade Marks and Designs Hearings
   31 January 2012