Celgene Corporation

[2013] ATMO 10

TRADE MARKS ACT 1995

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

Re:Trade mark application number no. 1439752 (5) – CELOMID - in the name of Celgene Corporation.

Delegate:	Bianca Irgang
Representation:	Applicant: Alison McGinn of Banki Haddock Fiora
Decision:	2013 ATMO 10 Ex parte – section 43 ground for rejection – trade mark contains an 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to be considered - connotation within the trade mark not strong under the circumstances – ground for rejection withdrawn and application accepted.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. Celgene Corporation (‘the applicant’) filed application number 1439752 on 29 July 2011 in class 5 of the International Classification of Goods and Services. Details of the application are set out below.

   Trade mark:  CELOMID

   Trade mark application:      1439752

   Priority Date:  29 July 2011

   Goods Specification:            Class 5: Pharmaceutical preparations including cytokine inhibitory drugs; pharmaceutical preparations for the treatment of certain cancers; pharmaceutical preparations that modulate the immune system

2. The application was examined and, on 22 November 2011 the examiner issued a first adverse report on the basis that there was a ground for rejection under section 43 of the Trade Marks Act 1995 (‘the Act’) in respect of all the goods in class 5. 

3. The applicant made submissions in rebuttal which did not persuade the examiner.  In his third report the examiner wrote that unless the applicant was able to produce evidence or other circumstances in support of the application he would initiate the rejection process. He reminded the applicant that it had the right to request a hearing.

4. The applicant requested a hearing which I conducted as a delegate of the Registrar of Trade Marks on 22 June 2012 in Sydney.

   The Law

   5. Section 33 of the Act provides:

   33  Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   Note:For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

   Discussion

5. The ground for rejection is that pursuant to section 43 of the Act which relevantly states:

   43       Trade mark likely to deceive or cause confusion

   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 or a sign contained in the trade mark has, the use of the trade mark in relationship to those goods or services would be likely to deceive or cause confusion.

6. In respect of section 43 and its application to pharmaceutical names, Hearing Officer Thompson had a very useful discussion in Boehringer Ingelheim International GmbH [2012] ATMO 117 (30 November 2012) (‘ZELCIVOL’) where he states:

   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.

   The Registrar’s practice in the examination of applications which contain potentially misdescriptive matter has evolved from the previous examination practice under the superseded 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)

7. This discussion is relevant to the present situation. 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’.

8. 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.

9. Further direction can be found in the Trade Marks Examination Manual which goes on to state in Part 29 paragraph 4.3:

   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>

   Meaningful INN stems

   Some INN stems consist of simple two or three 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

10. These considerations are all relevant to the present situation. 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 (CELOMID) and which are not fully addressed in the guidelines above. 

    Applicant’s Submissions

11. Ms McGinn made submissions that focused on:

    o    the state of the Australian register
    o    the applicant’s 10 previous CEL- trade mark registrations
    o    the application of the official guidelines
    o    the state of the marketplace.

12. Ms McGinn tendered the results of a search of the Australian trade marks register. The search identified 40 entries which are:

    o    invented words beginning with suffix CEL-
    o    registered or protected

    oboth Australian originating and overseas originating registrations

    oin respect of goods explicitly including pharmaceutical preparations/products

    ounrestricted as to the chemical nature of the pharmaceutical preparations/products

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

13. Ms McGinn stated that no endorsements have been entered on the other CEL- registrations and submits:

    The prefix CEL is a common one in the English language, included in words such as cellular, cell, cellulite, celebrate, celebrity, celibate, celsius, celestial, cellar, cello and celiac or as in the case here, could indicate a relationship to the applicant, Celgene. The CEL prefix does not indicate one single meaning to consumers, being likely in this case to be medical professionals and as such no confusion will be caused by acceptance and use of the CELOMID mark.

    The applicant manufactures and distributes pharmaceuticals that are used to treat cancer and other immunological disorders and which contain a range of different ingredients. We submit that the relevant market participants would not be misled or confused as to whether the relevant goods contain or are derived from cellulose.

    We submit that the suffix -OMID is distinctive and that the mark CELOMID has sufficient additional distinctive material such that any meaning of the prefix CEL is overcome and no confusion will be caused in the marketplace.

    The INN stem CEL, consisting of only three letters, and including the distinctive suffix OMID, loses any meaning it may have originally had (in any event we submit that it does not only indicate derivation from cellulose). The inclusion of the three letters, in a mark which has no relevance to "cellulose" is not significant enough to warrant this objection. We submit that in the CELOMID mark, the additional material, being the letters OMID means that the letters CEL are not meaningful within the trade mark and that the mark would not be seen to relate to cellulose derivatives.

    Additionally, the Applicant's CELGENE trade mark is registered in many countries worldwide (including Australia) and also contains the CEL prefix with four additional letters. We submit that the CELOMID trade mark should be subject to the same examination process as the prior marks containing the prefix CEL that have been accepted in a number of countries around the world including Australia. To reject this application when so many others have been accepted and where it is not apparent from the rest of the mark that the meaning that the examiner infers is envisaged, we submit is not justified. The fact that these marks have been regularly accepted shows that confusion is highly unlikely and that the other material in those marks takes the focus away from any meaning the CEL prefix may have.

14. Ms McGinn drew my attention to the guidelines in the Trade Marks Examination Manual and submitted that test is in the perception of the ordinary person 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.

15. 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 and 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.

16. However, as mentioned by Hearing Officer Thompson in his ZELCIVOL decision, such a 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.

17. Ms McGinn went on to submit that medical professionals cannot form an immediate impression that a pharmaceutical preparation which has a brand name beginning with the prefix CEL- will contain cellulose derivatives because they are frequently confronted with pharmaceutical preparations that begin in a like manner and yet themselves do not include cellulose. It is unlikely that they will therefore be deceived or confused in the manner suggested.

18. Ms McGinn concluded by observing that in the context of the application the prefix CEL- is:

    oa three letter prefix in an eight letter word and therefore not prominent

    onot pronounced in the word in the word in the same way as the INN stem due to the unusual and distinctive suffix –OMID and therefore not prominent or obvious

    ofamiliar and commonplace to the ordinary person as a result of its inclusion in other words in the English language such as cell, cellulite, celebrity and celiac

    onot immediately meaningful to the “buying public”, or their advisers in respect of pharmaceuticals as being associated with cellulose derivatives, and therefore unlikely to be a real and obvious danger.

    Considerations

19. Upon considering the Register and the 40 prior trade marks containing the prefix CEL- that the holder brought to my attention and which have no restricting endorsement, I conducted internet research to determine the nature of the drugs or pharmaceutical preparations in respect of which the trade marks are used.

20. These previous CEL- trade marks are applied to pharmaceuticals which are used in relation to the treatment of cellulite, AIDS, diseases of the central nervous system, cancer and influenza. They are also applied to anti-rejection drugs for kidneys, liver and heart transplants as well as being applied in relation to vaccines and organ bath solutions, growth mediums for E.coli, hygienic wipes, hair growth shampoos, cell sprays for burns victims and drugs to stop bleeding for military purposes. The sheer quantity of CEL- prefixed trade marks on the Register that are being used on pharmaceutical goods which, at face value, have nothing to do with cellulose derivatives is overwhelming. The marketplace is full of CEL- trade marks that are applied to pharmaceuticals being used for a wide variety of different and unrelated medical conditions by a wide variety of different companies. Some of these trade marks are also registered in other jurisdictions without any mention of INN stems and I note that some of these trade marks also contain a second INN stem. 

21. I also note that CEL has a definite meaning in the English language. The Macquarie Dictionary defines CEL as:

    Cel: noun Film a transparent sheet, originally of celluloid, on which an image is created, used in a sequence of such images to make an animation, as for a cartoon. Also, cell, celluloid. [shortened form of celluloid]

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

    a.          the prefix CEL- 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.          Use of the trade mark on drugs other than those containing cellulose derivatives 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.

23. I am also in agreement with Hearing Officer Thompson in his ZELCIVOL decision where he considered that it was possible to extract the following general principles from the above considerations in addition to those stated in the Trade Marks Examination Manual and where most of the following factors are present:

    a.The prefix 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.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 ‘suffix’ does not conform with the usual formulation specific to the INN-stem under consideration,

24. I believe that all of these factors are present in this case. Accordingly, the section 43 ground should not be raised as it is unlikely that the use of the INN-stem would deceive or cause confusion.

    Decision

25. Having regard to all of the above, I will accept the application for possible registration.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    31 January 2013