Health World Limited

[2013] ATMO 43

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1526159(5) - OESTROEASE- in the name of Health World Limited.

Delegate:	Nicole Worth
Representation:	Applicant: Ian Tannahill of Ahearn Fox Attorneys
Decision:	2013 ATMO 43 Ex parte – section 43 – trade mark contains an INN stem – connotation unlikely due to manner in which trade mark is constructed – relevant market also to be considered – ground for rejection withdrawn and application accepted.

Background

1. This is a decision pursuant to section 33 of the Trade Marks Act 1995 (‘the Act’) in respect of an application to register the trade mark detailed below:

   Application Number: 1526159

   Applicant:                  Health World Limited (‘the Applicant’)

   Priority Date:  16 November 2012

   Goods:(Class 5): Hormone deficiency preparations, including oestrogen deficiency preparations; pharmaceutical preparations for use in the treatment of menopause and allied disorders in women including post menopause symptoms and conditions; pharmaceutical preparations for use in female hormonal replacement therapy; pharmaceutical preparations for boosting low levels of oestrogen.

   Trade Mark:              OESTROEASE          (‘the Trade Mark’)

2. The application was examined and a ground for rejection was raised under section 43 in the following terms:

   Your trade mark is, or contains, the syllable OESTR-.

   This is very similar to ESTR-, the International Nonproprietary Name (INN) for the pharmaceutical substance ESTROGENS. (INNs are recognised generic names for particular pharmaceutical substances.)

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

3. The examiner indicated that the application could, however, proceed to acceptance if the Applicant agreed to a conditional registration, being that any use of the Trade Mark in respect of pharmaceuticals would be limited to such goods containing estrogens, as designated by the International Nonproprietary Name ‘estr’.

4. The Applicant responded by proposing an alternative condition of registration, being that any use of the Trade Mark in respect of pharmaceuticals would be limited to such goods that contain either estrogens or compounds that imitate estrogens.

5. The examiner was not satisfied with the proposed alternative and maintained the ground for rejection. As a consequence the Applicant exercised its right to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, on 30 May 2013. Mr. Ian Tannahill of Ahearn Fox Patent & Trade Mark Attorneys filed written submissions for the Applicant and spoke at the hearing on its behalf.

International Nonproprietary Names

1. The International Nonproprietary Name (INN) scheme is governed by the World Health Organisation (‘WHO’) to facilitate the identification of pharmaceutical substances or active pharmaceutical ingredients. One of the intentions of the scheme is to avoid confusion amongst health professionals (or others who may prescribe or dispense such substances) by assigning standard names (‘INNs’) to pharmaceutical substances. The names are designated as public property (hence ‘nonproprietary’) so that anyone may use them to indicate the nature of their pharmaceutical substance. INN stems are word elements that define the pharmacologically-related group to which the INN belongs.

2. In 1993 the decision making body of the WHO, the World Health Assembly, endorsed resolution WHA46.19 which requests Member States to develop policy guidelines on the use and protection of INNs and discourage the use of trade marks derived from INNs, particularly those which include established INN stems.

3. ‘Estr’ is listed by the WHO as an INN stem in respect of estrogens. ‘Estrogen’ and ‘Oestrogen’ are spelling variations of the same word, the former deriving from American spelling and the latter from British spelling.

Section 43 – Trade mark likely to deceive or cause confusion

1. Section 43 of the Act provides:

   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.

2. Section 43 is an absolute ground for rejection, in that potential deception or confusion arises not from a comparison with other trader marks but rather from a characteristic inherent to the trade mark at hand. Gyles J, in Pfizer Products Inc v Karam[1], observed that:

   ‘Connotation’ is a secondary meaning implied by the mark. The likelihood of deception or confusion must flow from the secondary meaning inherent in the mark itself. It is apparent that the underlying purpose of s 43 is a similar purpose to that lying behind ss 52, 53 and 55 of the Trade Practices Act 1974 (Cth). It is to prevent the public being deceived or confused as to the nature of the goods offered by reason of a secondary meaning connoted by the mark in question, rather than, for example, deception by reason of similarity with other marks…

   [1] [2006] FCA 1663; (2006) 70 IPR 599.

3. The ground for rejection is therefore based upon the premise that OESTROEASE gives rise to a secondary meaning, namely that the prefix ‘oestr’ closely resembles the INN stem ‘estr’ and it therefore connotes goods which contain estrogens. Consequently should OESTROEASE be used upon goods which do not contain estrogens the public would be deceived or confused as to the nature of those goods.

4. Whether or not this is indeed the case depends upon a consideration of the nature of the goods in question, the nature of the connotation that arises from the use of the INN stem in the trade mark, and the likelihood of deception or confusion taking into account all of the factors surrounding the application.

The nature of the goods

1. The Applicant describes its good thus:

   The Applicant intends to use the trade mark OESTROEASE in respect of a pharmaceutical product that has been developed as an alternative to Hormone Replacement Therapy and is intended to be used to treat many of the aforementioned menopausal symptoms.

   The OESTROEASE product contains Rhapontic Rhubarb Root Extract, Microcrystalline Cellulose, stearic acid, silica and enteric coating (deionized water, glycerol triacetate, ammonium hydroxide and polyethylene glycol).

   Phytonutrients have been found to be very successful in easing symptoms of menopause. The main phytonutrient contained in the OESTROEASE product is Rhapontic Rhubarb extract which contains a compound E[R]r731, a phytoestrogen.

2. According to my own research estrogens are chemical compounds (hormones) which the human body produces, and during menopause the levels of certain estrogens produced in a female body falls. This may result in a number of physical and psychological effects including hot flushes, disturbed sleep or anxiety. These effects can be eased by supplementing the body with other naturally or synthetically produced estrogens, however some forms have been linked with significant health risks including cancers and blood clots. Phytoestrogens, chemical compounds produced by plants which have the ability to mildly mimic estrogens in the human body, can purportedly also ease the effects of menopause with little or no apparent health risk. The compound ERr731, derived from the plant Rhapontic Rhubarb, is one such phytoestrogen and it is that which is the active ingredient in the Applicant’s goods.

3. The Applicant’s goods therefore, rather than containing estrogen, contain compounds to ease the effects of the fall in estrogen in the human body.

Connotation

1. Often the question of whether the presence of an INN stem in a trade mark will give rise to a connotation depends upon whether the INN stem is being used meaningfully. A number of recent decisions by the Registrar have dealt with this matter[2]. Here, however, it is not contended that the word element ‘oestr’ does not refer to estrogen, but rather that the way the trade mark is constructed does not necessarily connote that the trade mark contains estrogen.

   [2] See for example Boehringer Ingelheim International GmbH [2012] ATMO 117; Celgene Corporation [2013] ATMO 10; Boehringer Ingelheim Vetmedica GmbH [2013] ATMO 8 and Ceva Sante Animale [2013] ATMO 27.

2. In this regard the Applicant submits:

   Below is a list of pharmaceutical names included in a publication published by the World Health Organization that demonstrate the correct usage of the stem ESTR:

   “alemestrone (24), benzestrol (1), broparestrol (8), cloxestradiol (12), disnestrol (1), diethylstibestrol (4), epiestriol (12), epimestrol (22), estradiol (4), estradiol benzoate (4), estradiol undecylate (16), estradiol valerate (35), estramustine (24), estrapronicate (34), estrazinol (16), estriol succinate (14), estrofurate (25), estrone (4), ethinylestadiol (1), fenestrel (18), fosfesterol (15) fulvestrant (78), furostilbestrol (1), hexestrol (1), mestranol (12), methallenstril (6), methestrol (1), moxestrol (24), nilestriol (32), orestrate (17), polyestradiol phosphate (36), promestriene (31), quinestradol (15) and quinestrol (14).”[3]

   The Applicant’s trade mark consists of two syllables, namely “oestro” and “ease”.

   The first syllable “oestro” is also the first syllable of the English spelling of the word “oestrogen”. (Estrogen is American English.)

   The second syllable “ease” is a well known English word meaning “comfort”, “absence of pain or discomfort”, “freedom from annoyance”, “relief” and “alleviation”…

   In our opinion, the Applicant’s trade mark is quite unlike many of the pharmaceutical names listed above that contain the stem ESTR. Many of these pharmaceutical names are quite difficult to pronounce, comprise three or more syllables, including often more than one syllable which is an abbreviation of a name of a chemical constituent. Further, none of the pharmaceutical names include an element, such as one or more syllables, that is an identifiable word.

   Having regard for our comments above, in our opinion, the Applicant’s trade mark does not resemble a typical pharmaceutical name, but does give the appearance of being a trade mark…

   [3] I note that this is a listing of all INNs containing INN stems, which is contained in Part IV of The use of stems in the selection of International Nonproprietary Names (INN) for pharmaceutical substances 2011, published by the WHO. The numbers beside each INN correspond to the numbered list in which the INN appears. There is no statement to the effect that the listing demonstrates the correct usage of an INN stem.

3. The Applicant then goes on to contend that trade marks with the suffix ‘ease’ or ‘eze’ are common in respect of pharmaceutical products and it provides a list of 16 such trade marks registered in class 5, with the conclusion that:

   Because the Applicant’s trade mark resembles trade marks that the public are familiar with, and not a pharmaceutical name, in our opinion members of the public are unlikely to dissect the mark with the view of ascertaining the composition of the Applicant’s pharmaceutical product and therefore wrongly assumes it contains estrogen…

   It is also our opinion, having regard for the many EASE/EZE trade marks that exist on the register, that members of the public are more likely to view these trade marks as conveying some intelligible information concerning the intended purpose of the goods…

   Having regard for our comments above, we believe it is likely that members of the public upon encountering a pharmaceutical product bearing the trade mark OESTROEASE will most likely think that the product is intended to ease the symptoms associated with menopause, (caused by low levels of estrogen), or the estrus cycle. Accordingly, in our opinion, it is unlikely that there will be any deception or confusion arising from the applicant’s use of the trade mark OESTROEASE in respect of pharmaceutical products that do not contain estrogen.

4. I agree with the submission that the Trade Mark is not constructed in the manner typical for the name of a pharmaceutical substance. Rather it appears to convey the intended purpose of the goods, namely that they ease the effects of the fall in estrogen which occurs during menopause. I consider this to be the likely way the trade mark would be perceived by the general public, they being familiar with both the word elements ‘oestro’ and ‘ease’ and the notion that the effects of menopause are associated with a fall in estrogen. It is also precisely because they are not familiar with the INN scheme that the general public would be unlikely to perceive the presence of ‘oestr’ as a reference to goods which necessarily contain estrogens. I therefore do not consider that, for the general public, the trade mark possesses a connotation likely to deceive or confuse.

5. Health professionals, however, are presumably knowledgeable in the use of INNs and INN stems. They are more likely to recognize and rely upon such names and word elements, and as such it is possible that the Trade Mark possesses a connotation for those people.

The likelihood of deception or confusion

1. Given that there is a potential connotation possessed by the Trade Mark, I turn now to the question of whether that connotation is likely to deceive or confuse should the goods not contain the substance to which the INN stem ‘estr’ pertains, being estrogens.

2. In this regard, the Applicant points to the registered trade marks OESTROTAIN, CHESTRATA and LESTREG, none of which are registered under conditions that restrict their use to accord with the INN stem ‘estr’. I note further that the Register contains the following trade marks, registered in respect of pharmaceutical and medicinal goods, none of which are subject to registration conditions[4]:

   [4] It is relevant to note, here, that the Registrar’s practice has evolved in recent years to more closely scrutinise applications made in respect of pharmaceutical goods.

ESTRUMATE	ESTOXYN	ESTRAVAL	OESTROTECT
ESTRIFAM	ESTROFEM	Estro Balance	ESTROTECT
ESTRADERM TTS	estroPLAN	ESTRU$ ALERT	Estro-Sense
ESTRACOMB TTS	ESTRADOT	ESTROVAREX	OESTRODOSE
ESTRACOMBI TTS	ESTROGEL	SALVESTROL	OESTROTAIN
ESTRODROL	ESTREMO

1. In particular, internet research indicates ‘Estro Balance’ and ‘Estro-sense’ appear in the Australian market place and they are the names of products that contain, as with the Applicant’s goods, plant derived substances to ease the effects of menopause rather than estrogens. Similar products appear in the same market under the names ‘estro-rhythm’ and ‘estro-logic’, and in overseas markets under the names ‘Estro-EZ’ and ‘Estro-Ease’.

2. There are therefore at least four products in the Australian market place which do not contain estrogens and are named in a manner similar to the Applicant’s goods, that is, containing the word element ‘estr’ but constructed in such a manner as to convey their intended purpose rather than their composition. There are also a further twenty registered trade marks which arguably use the INN stem ‘estr’ in a meaningful way (as a reference to estrogen) and which are not restricted as to what goods they may be used upon. Given this, it is reasonable to suppose that health professionals (being those most at risk of being deceived or confused) are at least to some extent familiar with menopause-related products which may or may not contain estrogens but nonetheless utilise the INN stem ‘estr’. Accordingly, it is also reasonable to question the degree of any potential deception or confusion in the relevant market arising from the use of the INN stem.

3. In addition, I note that many menopause relief products are available without prescription (particularly ‘herbal’ or plant-derived products) thereby bypassing the very audience most likely to be confused by the presence of the INN stem. The Applicant does not state whether its products are prescription or non-prescription. However as another of the surrounding circumstances to take into account, the typical manner of obtaining herbal or plant-derived menopause relief products appears to lessen the likelihood of deception or confusion.

4. I am therefore not satisfied that OESTROEASE is likely to deceive or cause confusion when used upon pharmaceutical or medicinal goods not containing estrogens. Given I am not so satisfied, I believe a restriction to the use of the trade mark is unnecessary.

Decision

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

Nicole Worth
Hearing Officer
Trade Marks Hearings
12 June 2013