Ceva Sante Animale

[2013] ATMO 27

TRADE MARKS ACT 1995

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

Re:Trade mark application number no. 1446984 (5) – SYNCROSTIM - in the name of CEVA SANTE ANIMALE.

Delegate:	Bianca Irgang
Representation:	Applicant: Sean McManis of Shelston IP
Decision:	2013 ATMO 27 Ex parte – Regulation 17A.24 - section 43 ground for rejection – trade mark contains an INN stem - connotation within the trade mark strong under the circumstances – ground for rejection upheld and IRDA rejected.

Background

1.     CEVA SANTE ANIMALE (‘the holder’) has applied for the extension of protection of its trade mark to Australia. Details of its international Registration Designating Australia (‘IRDA’) are as follows:

Trade mark:  SYNCROSTIM

Trade mark application:        1446984

International Registration:    1088297

Filing Date:  8 August 2011

Convention Details:              9 February 2011
  113804669
  France

Goods Specification:             Class 5: Veterinary products

2. The IRDA was examined and, on 17 October 2011 the examiner issued a Notice of Provisional Refusal 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 holder made submissions in rebuttal which did not persuade the examiner.  In her third report the examiner wrote that unless the holder was able to produce evidence or other circumstances in support of the application she would initiate the rejection process. She reminded the holder that it had the right to request a renunciation of the Australian designation or to request a hearing.

4.     The holder requested a hearing which I conducted as a delegate of the Registrar of Trade Marks on 25 February 2013 in Canberra.

The Law

1. Regulation 17A.28Grounds for rejecting IRDA

   (1)The grounds for rejecting an IRDA are the grounds set out in sections 39 to 44 of the Act, as affected by subregulation (2).

   (2)Sections 39 to 44 apply in relation to an IRDA as if:

   (a)a reference in those sections:

   (i)to an application for the registration of a trade mark were a reference to the IRDA; and

   (ii)to an applicant were a reference to the holder of the IRDA; and

   (b)the reference in paragraph 41 (6) (a) to the filing date in respect of an application were a reference to the date of international registration or the date of recording, as applicable, in respect of the IRDA; and

   (c)each reference in subparagraphs 44 (1) (a) (i) and (2) (a) (i) to a trade mark registered by another person included a protected international trade mark held by another person; and

   (d)each reference in subparagraphs 44 (1) (a) (ii) and (2) (a) (ii) to a trade mark whose registration is being sought by another person included a trade mark in respect of which the extension of protection to Australia is being sought by another person.

   Section 43

   6.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.

   Background to Registrar’s practice

   7.     The reasons given by the examiner for raising the ground for rejection is that the suffix –STIM contained in the Trade Mark prima facie connotes 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 -STIM is listed as an International Nonproprietary Name (INN) stem indicating that the goods upon which it is used consist of colony stimulating factors.  I will discuss exactly what these factors are later in this decision.

   8. The Registrar’s practice with respect to section 43 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 (at paragraph 6-11):

   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):

   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

   9.     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 and Discussion

10.     The INN stem ‘–STIM’ is a reference to containing colony stimulating factors. Mr McManis provided an extract from Wikipedia concerning the etymology of colony stimulating factors which states:

The name “colony-stimulating factors” comes from the method by which they were discovered.

Hemopoietic stem cells were cultured (see cell culture) on a so-called semisolid matrix, which prevents cells from moving around, so that, if a single cell starts proliferating, all of the cells derived from it will remain clustered around the spot in the matrix where the first cell was originally located. There are referred to as “colonies”. Therefore, it was possible to add various substances to cultures of hemopoitic stem cells and then examine which kinds of colonies (if any) were “stimulated” by them.

The substance that was found to stimulate formation of colonies of macrophages, for instance, was macrophage colony-stimulating factor, for granulocytes, granulocyte colony stimulating factor, and so on.

11.     Mr McManis submitted:

A colony stimulating factor is a substance found to stimulate formation of colonies. It is well-known that many pharmaceutical products, whether they be human or veterinary products, operate to stimulate a reaction within the body aimed at fighting some sort of infection or disease, or generally aimed at improving health in some other way through stimulation of a reaction.

Given the obvious derivation and meaning of “STIM”, which is itself derived directly from a descriptive verb, there is no strong reason for believing that consumers of any kind would associate use of that part word exclusively with products incorporating one particular stimulating agent.

It is, in our submissions, far more likely that most consumers who (i) will have an ordinary knowledge of the English language, (ii) will be familiar with the word “stimulate” and (iii) will typically be aware that most (if not all) medicines stimulate a reaction within the body of a person or animal; will think that the suffix STIM in the applicant’s mark implies that the product acts to stimulate a beneficial reaction within an animal’s body.

In the case of SYNCROSTIM, they will most likely see that mark as alluding to a veterinary preparation that stimulate multiple reactions simultaneously, being synchronised reactions.

12.     He then went on to provide:

·a list of 17 marks on the Register in Class 5 that contain the suffix –STIM

·a list of marks on the Register in Class 5 that contain the part word STIM;

·a listing from the Public Chemical Registration Information System (PUBCRIS) of product names containing STIM;

·the results of an Australian Register of Therapeutic Goods (ARTG) search for product names containing the suffix STIM;

13.     He argued that this evidence showed use of trade marks containing the word STIM but that there was no evidence that anyone uses a trade mark containing the suffix –STIM to identify a veterinary preparation being a colony stimulating factor. Mr McManis also pointed out that IP Australia’s publication Australian Trade Marks Office Manual of Practice and Procedure (‘the Manual’) states:

‘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.[1]

Section 4.3.2 of the 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.’

[1] 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 (the Woolworths Metro case)

14. Mr McManis submitted that there is no evidence to establish that there is such an awareness of INN stems in the community, there is no evidence for believing that people analyse and understand trade marks to have the meaning assumed and that there is no good basis for maintaining that the use of the suffix –STIM in the holder’s mark would be likely to cause confusion. Mr McManis put forward a number of authorities relating to how section 43 has been dealt with in the courts[2]. He stated that:

INN stem objections are apparently being raised on the basis of WHO request to consider how greater protection might be given to INN stems, not on the basis of evidence that there is now a likelihood of confusion that was not considered to exist previously

In relation to the implementation of policy decisions rather than evidence justifying application of the provisions of the Act, the Courts have commented in Companhaia Souza Cruz E Comercio v Rothmans of Pall Mall (Australia) Ltd [1998] FCA 689 (17 June 1998) on official practices in relation to surnames (emphasis added):

The reason for rejection arising out of the existence of the surname “Free” is not easy to follow. I gather from Mr Homann’s reasons there is a policy document issued by the Registrar of Trade Marks that decrees a mark, to be registrable, should not comprise or include a name that occurs more than 400 times in the Australian Electoral Register. The policy document is not before the Court, so I do not know that rational it advances for this dictate. Why 400? The answer does not matter. The policy has no foundation in the Act; so it is devoid of any legal justification. It is not for the Registrar to impose non-statutory restrictions on the words that may be registered as trade mark. To the extent Mr Homann paid any attention to this aspect of the case, he erred in law.

The Registrar’s role is to appropriately implement the provisions of the Act, rather than giving effect to policy, however, well meaning or laudable.

[2] French J in Registrar of Trade Marks v Woolworths [1999] FCAFC 1020; [1999] FCA 1020; [1999] 93 FCR 365; (19999) 45 IPR 411; [1999] AIPC 91-499; Scotch Whiskey Association v De Witt (2007) FCA 1649; McCorquodale v Masterson (2004) FCA 1247

15. I do not believe that the above situation is analogous to the present case. Referring back to the ZELCIVOL decision, I reiterate the words of Hearing Officer Thompson that the Trade Marks Office is not an enforcement agency and that other government bodies such as Australian Pesticides and Veterinary Medicines Authority and the Therapeutic Goods Administration are better placed to assess and address instances of deception in the marketplace. However, the interaction of trade marks and public health issues are a concern of the Registrar which is why the Australian Trade Marks Office has developed guidelines on the examination and registration of INNS and INN-stems as encouraged by WIPO and WHO. Nevertheless, a ground under section 43 will exist where there is a real tangible danger of deception or confusion arising from a connotation within a trade mark.

16.     The matter for my decision in this case is whether the application of the trade mark SYNCROSTIM to the holder’s goods, namely ‘veterinary products’, is likely to cause deception or confusion if the goods are not restricted to those containing colony stimulating factors.  The question amounts to whether the presence of the suffix –STIM in the Trade Mark creates the connotation of colony stimulating factors such that use of the Trade Mark (as a whole) on unrelated veterinary products would be likely to cause deception or confusion.  

17.     Mr McManis argued that the Registrar wrongly assumes that persons seeing the name SYNCROSTIM would identify the suffix -STIM as a distinct element in the trade mark. I cannot agree with Mr McManis. The holder’s trade mark is for the conjugate or invented word SYNCROSTIM which will break down into essentially two parts: SYNCRO and STIM. Each of these parts has the potential to be recognized by the consumer to be shortenings of the words SYNCHRONISE/SYNCHRONISATION and STIMULATE/STIMULATION which is exactly what the holder argued earlier in its submissions. I believe that the suffix –STIM is a distinct element in the trade mark particularly since the four letters arranged to form the word “STIM” are an unusual combination in the English language with few words having STIM as a prefix or suffix.

18.     Mr McManis has argued that the part word STIM has an obvious derivation, namely as an abbreviation of the word “stimulate” and that pharmaceutical products are used to stimulate some reaction or some defense mechanism in the body. He submits that it is not unlikely that businesses will choose to use the part word STIM in their trade mark to convey the ordinary meaning it implies and that consumers will see the suffix as indicating a pharmaceutical that “stimulates” a reaction.

19.     Mr McManis pointed out that veterinary professionals 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 and a list of active ingredients on the packaging  when the product is supplied to the end user.  He 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.

20.     However, as mentioned by Hearing Officer Thompson in his ZELCIVOL decision, such a submission is a double-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. It is highly likely that the name of the veterinary pharmaceutical preparation will be noticed and focused on before the list of active ingredients on the packaging is consulted, if indeed it is consulted should a consumer recognize the INN-stem in the name of the product.

21.     The recent decisions concerning the trade marks ZELCIVOL, CELOMID[3] and SEREQUIN[4] did focus on such factors as use of the relevant stem by other traders, the state of the Register and the maturity of the Australian marketplace. However, it is important to note that in these cases the INN-stems in question were respectively:

·    short two letter INN-stem (-OL)

·    common letter combinations in the English language which could stand as an abbreviation or shortening of a number of different words (CEL) or

·    had been removed from the official list of INN-stems in about 1974 with around 30 years of products including the INN-stem having been sold in the Australian market for a diverse range of pharmaceutical and veterinary goods (-QUIN). 

[3] Celgene Corporation (2013) ATMO 10

[4] Boehringer Ingelheim Vetmedica GmbH (2013) ATMO 8

22.     None of the above situations are analogous to the case before me. In the present case the INN-stem is STIM and it is not a short two letter combination, nor is it a common letter combination. It is also still listed on the official list of INN-stems. I believe that the suffix –STIM has the meaning in the holder’s trade mark that the goods are colony stimulating factors and that there is a real likelihood of deception or confusion if the goods are not of that nature.

23.     Mr McManis raised a number of other trade marks on the register which contain STIM and have obtained registration without the appropriate endorsement being added. However, each case must be assessed on its merits - with regard to the relevant judicial tests and not only with regard to the state of the Register.  Relevant to this are the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks[5] at paragraph 35 where, after approving the reasoning of Jacob J. in British Sugar plc v. James Robertson & Sons Limited[6] to the effect that a comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, his Honour observed:

‘I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.’

[5] (2000) 47 IPR 579; (2000) AIPC 91-539

[6] [1996] RPC 281 at 305

24.     Mr McManis confirmed that the holder’s goods do not contain colony stimulating factors and I believe that the INN-stem STIM is present and meaningful in the trade mark. While there are other cases of traders in the marketplace using STIM on goods that potentially do not contain colony stimulating factors, Mr McManis is correct in pointing out that the Australian Trade Marks Office is not an enforcer in the pharmaceutical marketplace. The Trade Marks Office deals with its own legislation and with the matters brought before it. In this case, the unusual INN-stem -STIM is meaningfully present within a trade mark and connotes that the claimed goods contain colony stimulating factors. If the goods do not contain those factors confusion is likely to ensue. A consumer certainly may investigate the active ingredients on the packaging to determine that the goods do not have anything to do with colony stimulating factors but it does not remove the probability of confusion occurring once a consumer recognizes the meaningful INN-stem in the name of the product.

25.     The holder has submitted that there is no evidence that the consumer would recognize or be aware of the INN-stem in the trade mark but I disagree. STIM is not in common use in the English language but it is an INN-stem. An important feature of the INN system is that the names of pharmacologically-related substances demonstrate their relationship by using a common "stem". By the use of common stems the medical practitioner, the pharmacist, the veterinarian, or anyone dealing with pharmaceutical products can recognise that the substance belongs to a group of substances having similar pharmacological activity. These are the consumers likely to prescribe the holder’s products and they are the consumers most likely to recognize an INN-stem and become confused. The inclusion of the INN-stem STIM in the holder’s trade mark is likely to give rise to a connotation that the holder’s goods contain colony stimulating factors. The holder has advised it can not restrict its goods to those containing colony stimulating factors since its goods do not contain them. In this case, use of the holder’s trade mark would be likely to give rise to deception or confusion

26. I find that a ground of rejection exists under section 43 with regards to all the goods claimed in specification of the holder’s trade mark. The holder has not provided evidence or reasons which are sufficient to overcome the ground for rejection.

Decision

27.     Regulation 17A.24 provides:

17A.24Final decision on examination

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

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it.

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

(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(a)it is not in accordance with this Division; or

(b)there are grounds for rejecting it, in whole or in part.

28.     I reject IRDA no. 1446984 (International Registration No 1088297), SYNCROSTIM, and hence extension of protection is refused.

Bianca Irgang
Hearing Officer
Trade Marks Hearings
3 May 2013