Sanofi-Aventis v Eremad Pty. Ltd

[2010] ATMO 76

TRADE MARKS ACT 1995

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

Re:Opposition by Sanofi-Aventis to registration of trade mark application 1185601(5) - CLOGREL, CLOGREL 75 - filed in the name of Eremad Pty. Ltd.

Delegate:	Terry Williams
Representation:	Opponent: Written submissions prepared by Rebekah Gay, of Shelston IP, patent and trade mark attorneys Applicant:  Julian Cooke of counsel, instructed by Georgia Marshall, solicitor, on behalf of Blake Dawson Waldron, solicitors.
Decision:	2010 ATMO 76 S 52 opposition: s 41 and issues of deceptive similarity to an INN considered.  S 41 and 62A not established, registration to proceed.

Background

1. Eremad Pty. Ltd (“Eremad”) has filed an application to register a series of trade marks under the provisions of s 51 of the Trade Marks Act 1995 (“the Act”).  That provision allows a number of trade marks to be registered as a single registration.  The trade marks in question are CLOGREL and CLOGREL 75 but the difference between them will play no part in what follows and it will be convenient to deal with Eremad’s application as though only one trade mark, “Clogrel”, or “the trade mark”, was involved.  Eremad’s application has been numbered 1185601 and, after examination, it was advertised as having been accepted for possible registration in respect of:

   Pharmaceutical preparations containing the active ingredient Clopidogrel for human use available on prescription only; none of the aforesaid being an oral anticoccidal parasiticide for the prevention of caecal and intestinal coccidiosis in poultry.

2. Registration of the trade mark has been opposed by Sanofi-Aventis (“the opponent”).  The opponent bears the onus of establishing a ground of opposition and relies on the grounds under sections 41 (not capable of distinguishing) and 62A (application made in bad faith).

3. Section 55 governs the determination of oppositions.  It provides:

   Unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:

   (a) to refuse to register the trade mark; or
   (b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

   having regard to the extent (if any) to which any ground on which the application was opposed has been established.

4. Thus, after the filing and service of evidence in support, answer and reply, the matter was set down for me to hear and to decide under delegation from the Registrar of Trade Marks.  At that hearing, the opponent did not appear but relied on written submission prepared by its patent attorney, Rebekah Gay, of the attorney firm Shelston IP.  Eremad was represented by Julian Cooke of counsel, instructed by Georgia Marshall, solicitor, on behalf of Blake Dawson Waldron, solicitors.

5. The opponent argues that in the present matter the two grounds have a common driver:  both are said to arise because the trade mark is, in simple terms, too close to the internationally recognised generic descriptor Clopidogrel.  To understand both the detail and the context of the opponent’s argument, it is necessary for me to set out more precisely the circumstances that have resulted in this international recognition.

   International Non-proprietary names: background

6. The World Health Organisation (WHO) commenced an International Non-proprietary Name (INN) programme in 1950 to:

   ... assign non-proprietary names to pharmaceutical substances so that each substance would be recognised by a unique name. Such names are needed for the clear identification, safe prescription and dispensing of medicines, and for communication and exchange of information among health professionals. INNs can be freely used because they are in the public domain[1].

   [1] The use of stems in the selection of International Nonproprietary Names (INN) for pharmaceutical substances, WHO, 2006, page 4.  The word “stems” in that title typically refers to a suffix, although it can also be a prefix or a combination of an infix and a suffix to identify pharmaceutical products as belonging to a group of substances having similar pharmacological activity.  WHO-designated stems are published and regularly updated.

7. The opponent drew my attention to what it calls “the dangers of allowing trade marks ‘derived from’ INNs”.  It notes that WHO has encouraged member states to enact “guidelines discouraging the use of trade marks derived from INNs”.  The words “derived from”, however, need to be understood in their proper context.  The documents on which the opponent relies are in evidence.  The first is Resolution WHA46.19 of the World Health Assembly, and there are three others: Information Leaflet for Trademark Departments[2], Guidance on INN[3] and a working document on INNs prepared by the WHO Secretariat at the request of WIPO and published by the latter as Annex 1 of SCT/19/4[4].  SCT/19/4 was itself part of the proceedings of the 19th session of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. 

   [2] WHO, accessed online July 2010 at WHO, accessed online in August 2010 at align="left">[4] SCT/19/4 was available online through WIPO, in July 2010, at >

   Resolution WHA46.19 goes no further than requesting member states, of which Australia is one, to, relevantly:

   develop policy guidelines on the use and protection of international non-proprietary names and to discourage the use of names derived from them, and particularly names including established stems[5], as trade-marks.

   [5] INNs are intended to show relationship to other substances of similar pharmacological action.  To assist with this, common stems have been created. A large number of such common stems are in use, and new stems are created when necessary.  It is common ground that “–grel” is a stem, denoting platelet aggregation inhibitors.  Other stems, which I have selected arbitrarily for illustrative purposes, include “–adol” and “–cillin”, which indicate, respectively, analgesics and a particular sort of antibiotic.

8. This was said in a context of a need to reduce to a minimum “the problems arising from drug nomenclatures that may create confusion and jeopardize the safety of patients”.  I will return to the importance of those words below but the concern behind this is readily found in the WHO material in evidence.  Consistently I note, from the Fifth Report of the WHO Expert Committee on the Use of Essential Drugs (November 1991):

   The procedure for selecting INNs allows manufacturers to contest names that are either identical or similar to their licensed trade-marks. In contrast, trade-mark applications are disallowed, in accordance with the present procedure, only when they are identical to an INN.  A case for increased protection of INNs is now apparent as a result of competitive promotion of products no longer protected by patents.  Rather than marketing these products under generic name, many companies apply for a trade-mark derived from an INN and, in particular, including the INN common stem.  This practice endangers the principle that INNs are public property; it can frustrate the rational selection of further INNs for related substances, and it will ultimately compromise the safety of patients by promoting confusion in drug nomenclature.

9. Returning, however, to SCT/19/4, I note that this document is intended (per clause 4) to provide:

   … additional background information on the work that has been carried out so far by the SCT regarding marks and INNs, and includes a proposal for a modified procedure for the communication of new lists of proposed and recommended INNs by the International Bureau of WIPO to the national and regional industrial property offices of WIPO Member States. 

10. That document does not make recommendations for new policy but relevantly concludes:

    The SCT is invited to consider the contents of the document and to indicate whether it wishes:

    …

    (ii) to continue work in the area of INNs and to identify possible areas of convergence in the interpretation of INNs as regards possible conflicts with trademarks; and

    (iii) to make any further recommendation on trademarks and INNs.

11. Annex 1 of SCT/19/4 (at page 11) does, as the opponent argues, state that:

    As a matter of principle, it may thus be recommended that trade-marks should not be derived from INN. In particular, the intentional incorporation of meaningful INN stems in trademarks should be avoided.

    This, however, is presented, by WHO, as a principle responsive to WHA46.19, to which I have referred in paragraph 6 above, and to the policy concerns that surround that document. 

12. SCT/19/4 continues, under the heading of “Rationale Behind” to note firstly the existence of “conflict” between the INN system and “invented (T/M) names”.  It notes that the process for the determination of INNs incorporates safeguards to “avoid infringement of existing intellectual property rights”.  On the other side of that coin, as it were:

    To safeguard the use of INNs, WHO has requested national institutions (i.e. drug regulatory authorities, trademark and patent authorities) to prevent the granting of exclusive proprietary rights to any INN … WHO also objects to registration as trade-marks of any invented names that are intrinsically similar to existing INNs, as this would lessen the inherent rights that INNs hold in the public domain. T/M departments should be guided by the similarity/dissimilarity criteria applied by the national trade-mark office in a given country, in respect of other proposed trade-marks.

    …

    [As to INN stems] WHO also objects to the use of invented names that include established INN stems, and especially registration of such names as trade-marks. The rationale is that this may complicate, or even exclude future use of those stems to select INNs for new substances belonging to the group. In fact, the consequence of introducing INN common stems into trade-marks, which seems to be increasingly popular, hampers the selection of new nonproprietary names within the established system.  Given that all new INNs should be distinctive from existing INNs, and without similarity to trade-marks, this practice causes confusion to the health professional, may be the source of serious errors in prescribing and dispensing and hinders the selection of future names for compounds in the same group of substances.

13. Overall, the concerns expressed by WHO, in language apparently intended for the general reader, for those with only a broad knowledge of intellectual property, or those who appreciate that intellectual property laws vary widely between nations, centre on avoiding confusion as well as protecting the common property aspect of INNs.

    The issues under the Act

    Section 41

14. Having set the scene by showing the concerns that may, within the scope of the statue, guide policy in the application of the law, I will set out the opponent’s submission in respect of s 41, as follows:

    The Trade Marks Office has heard a small number of oppositions to trade mark applications, which have relied on the similarity between the mark and an INN.  It is respectfully submitted that in the Office has not applied the relevant legislative provisions in a manner that is consistent with the decisions of the Federal Court in Kenman Kandy and Guylian.

15. This is a strong claim.  In supporting it, the opponent begins by noting the long-standing authorities on s 41.  The first stage of the inquiry into a trade mark’s capability to distinguish is, under s 41(3), the extent to which the trade mark is inherently adapted to distinguish those goods; see Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498. That test is as propounded by Justice Kitto in Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514. In his judgment, his Honour quoted Lord Parker in Registrar of Trade Marks v W. & G. Du Cros Ltd [1913] AC 624 as follows (opponent’s emphasis):

    The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.

16. The opponent then goes on to state (my emphasis):

    The reference to “some mark so nearly resembling it” by Lord Parker must encompass both substantially identical and deceptively similar.

17. The opponent’s written submission sets out its case, consistent with the following passage from Justice Kitto’s judgment (at 514):

    ... the question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives--in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess--will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it. (opponent’s emphasis).

18. Mr Cooke, for Eremad, argued that the opponent’s contention was unlikely.  He noted that in neither Clark nor Faulding does the High Court use the phrase "deceptively similar" when considering the inherent registrability of a trade mark, being word marks in both of those cases. To read the term "deceptively similar" into those decisions was, he said, “far fetched”. The phrase "deceptively similar" already had significance in trade mark law, appearing in and being defined by the 1955 Act. If the High Court had intended "deceptively similar" to be a relevant consideration for the purpose of s 24 and 26 of the 1955 Act (equivalent to s 41 of the Act) it would have expressly said so, in Mr Cooke’s view. While this is an attractive argument, it must also be recalled that Kitto J specifically referred to the infringement test in Clark.  Infringement, then and now, depends on the alleged infringer’s trade mark being, at the very least, deceptively similar to the registered one.

19. The opponent also notes that, in Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30, Justice Stone affirmed (at [161]) that:

    ... the test propounded by Kitto J in Clark Equipment ... sets out the necessary and sufficient criteria to determine whether a mark is adapted to distinguish one trader’s goods from those of another. ... That question must be answered bearing in mind that infringement would include use as a trade mark in relation to confectionery, not only the bug shape but also any “sign that is substantially identical with, or deceptively similar to” the bug shape. (opponent’s emphasis)

20. Most recently, Justice Sundberg, in Chocolaterie Guylian NV v Registrar of Trade Marks (2009) 82 IPR 13, confirmed that the “ultimate question” when considering the registrability of a trade mark under section 41 is (at [77]):

    ... whether there is a likelihood that other traders, acting with proper motives, will think of the shape and wish to use the same shape or one substantially identical or deceptively similar.” (opponent’s emphasis)

21. Finally, the opponent argues that it is not appropriate to take into consideration the effects of registration.  Here the opponent again notes Justice Kitto in Clark Equipment, supra, at 513:

    That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. (opponent’s emphasis)

22. The opponent has structured these propositions to support an argument that runs as follows: “If the trade mark Clogrel is deceptively similar to the INN Clopidogrel, then the trade mark is not inherently adapted to distinguish the goods of the applicant”. 

23. The opponent’s submissions note how, over time, various delegates of the Registrar have tried to explain Trade Marks Office practice under s 41 in relation to the extent of similarity between a trade mark and an INN.  I agree that those decisions have used language that, it is fair to say, is frustratingly close to that of deceptive similarity.  In the opponent’s view, however, there is a fundamental flaw in those decisions, which it argues have erected a new and inappropriate standard by which to assess capability of distinguishing.

24. The earliest reported decision of the Trade Marks Office concerning INNs is Glaxo Group Ltd v Pathstream Ltd (1987) 9 IPR 95 (“Glaxo”). In her decision, under the former 1955 legislation, the Hearing Officer (at 100) made reference to her:

    ... own knowledge of past and present practice of the Australian Trade Mark Office in respect of this type of mark ... that objection is only taken when there is complete identity between the proposed mark and an INN, or where the difference is very slight, for example, only one or two letters changed, leaving the word visually and phonetically almost indistinguishable from the INN.

25. The opponent notes that the Hearing Officer went on to say, “where there is no such close similarity between INNs and proposed marks, no such objection applies...” (opponent’s emphasis). 

26. Aventis Pharma SA v Alphapharm Pty Ltd (2005) 65 IPR 634 (“Aventis”) was the first case involving an INN to be decided under the Trade Marks Act 1995.  Of that case, the opponent says:

    In considering this ground, the Hearing Officer rejected the opponent’s argument that a mark should be refused where it is substantially identical with or deceptively similar to an INN.  Instead, he concluded (at [20]) that the formulations of “close similarity” (as used in Glaxo) and “confusingly similar” (as appearing at the time in the Examiner’s Manual) were “reasonable reformulations of the issue under s 41”, and that these did not necessarily include all cases of deceptive similarity.

    It appears from this decision that the “confusingly similar” or “close similarity” formulations fall somewhere between substantial identity and deceptively similarity, with some cases of deceptive similarity being within the formulation, and others not. It is unclear what cases of deceptive similarity would or would not be regarded as being confusingly similar or closely similar. [6]

    [6] Strictly, the situation to which the opponent refers in this paragraph arises by implication both from Aventis and from the other Trade Marks Office decisions to which I refer below.

27. The opponent goes on to refer to the more recent decisions of Sanofi-Aventis v Alphapharm Pty Ltd (2008) 78 IPR 379 (“Sanofi”) and Sanofi-Aventis v Eremad Pty Ltd [2009] ATMO 97 (“Sanofi-Aventis”), arguing:

    The Hearing Officer in Sanofi … regarded the relevant question for consideration as being “... whether the trade mark ‘nearly resembles’, or has ‘close similarity’ and is ‘confusingly similar’ to the INN...” (at [23]).

28. The opponent’s s 41 argument concludes with the proposition that the test(s) applied in Aventis and subsequently are inconsistent with the decision of Justice Sundberg in Guylian.

29. Mr Cooke defended the decisions in both Sanofi and Sanofi-Aventis. As the delegate noted in the latter at [14]-[16], the principle set down by Kitto J in Clark and Faulding is the principle to be applied when assessing inherent registrability under s 41 notwithstanding whether the trade mark in question is, for example, a word mark, a colour mark or a shape mark.  However, I agree with Mr Cooke that the application of that principle to those marks, different in nature from each other, cannot be reduced to a simple formula.  

1. Mr Cooke argued that in Kenman, when Stone J said at 156:

   In the above examples[7] the trade marks were held to be inherently adapted not because of any positive content but because they had no associations or significations that prevented them from being inherently adapted to distinguish a trader’s goods.  In addition they show, especially in the comments made in Mark Foy’s and Wella,[8] that, at least in relation to word trade marks, it is not an obstacle to inherent adaptation that the trade mark is also designed to elicit a positive emotional response … I see no reason why the attractiveness of a shape should be considered differently. Moreover, I also see no reason why an invented shape should be regarded as different from an invented word in terms of assessing its inherent capacity to distinguish a trader’s goods. (emphasis added by opponent, and noted by Mr Cooke)

   she was referring to the universality of the principle, rather than the application of that principle, when comparing shape and word marks.  

   [7] Her Honour referred to a large number of cases setting out the framework for assessing the registrability of both words in general and invented words in particular under the 1955 Act.

   [8] Mark Foy's Limited v Davies Coop & Company Limited [1956] HCA 41, (1956) 95 CLR 190; and Wella Aktiengesellschaft v Registrar of Trade Marks (1995) 33 IPR 374 respectively.

2. Likewise, in Philmac Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 452 at [50], Mansfield J said:

   ... there are no special rules which apply to colour marks compared to other features of goods which come within the definition of "sign". Nevertheless, the application of the test· in Clark Equipment to the context of colour marks itself raises difficulties peculiar to the application presently before the Court[9].

   [9] See also French J in Kenman at [46]: " ...the established test must be construed so as to be applicable to shapes."

3. It is not that the legislation provides for a different treatment of shape marks vis a vis colours or geographical terms or made-up words.  That, as the opponent notes, would be entirely contrary to Kenman. None the less, while the Act creates the same regime for shape and other trade marks, it does not assume that all trade marks are the same.

4. I think that it will therefore be safe to assume that the tests for substantial identity and for deceptive similarity have their respective places in assessing the capability of a trade mark to distinguish.  From first principles it is obvious that if a trade mark is either identical or substantially identical to an INN it is not capable of distinguishing.  Equally, if the trade mark is used in respect of pharmaceuticals that do not consist of the relevant substance, the potential for deception would trigger s 43, which, as various delegates have noted over time, can function as the obverse of s 41 in such cases.

5. At a lesser level of resemblance there is a spectrum of possibilities, as I noted in Aventis.  To put the record straight with respect to deceptive similarity, as the opponent would have me do, I firstly note the terms of s 10, the relevant statutory definition:

   For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

6. If, towards what might be called the top end of that spectrum of resemblance, a trade mark that is not substantially identical to an INN resembles the INN to such an extent that it can be mistaken for the INN or, imperfectly recollected, be the cause of confusion with respect to the INN, I think it would again follow from first principles that it is not capable of distinguishing the applicant’s goods from those of other traders, those who make legitimate use of the INN.  Again, if the goods for which registration is proposed to not consist of the relevant substance, rejection or refusal of the application under s 43 would be appropriate.

7. To this point, I have identified two categories of trade marks that are not capable of distinguishing.  There is a third category, at a still lesser level of resemblance, as I will explain below.  It will be convenient to consider this category by returning briefly to Aventis.  There I said (with some abridgement):

   [The opponent] noted the words “confusingly similar” used in the Trade Marks Office Manual of Practice and Procedure. Those words are not defined in the Act. The opponent argued they would be such as to cover situations where the trade mark sought to be registered was “deceptively similar” to an INN.

   I am not sure that this concept is a proper part of the correct approach to s 41. The classic test for s 41 purposes is well known …

8. I then set out the familiar quotes from Lord Parker in Registrar of Trade Marks v W. & G. Du Cros Ltd, and from Kitto J in Clark Equipment (both supra).  The latter reads (emphasis added):

   The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods.

9. I contrasted this with FH Faulding & Co Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd, (1965) 112 CLR 537 at 555, a later case in which Kitto J restated the relevant principle but did not refer to marks “nearly resembling”.  I therefore went on to say:

   I therefore think that it puts too much stress on the words “some mark nearly resembling it” to say that this necessarily includes all cases of deceptive similarity.  Deceptive similarity covers a range of differences, from substantial identity, through trivial alterations, to those that merely cause confusion.  The case law suggests that trivial alterations of common words are not enough to create marks that are capable of distinguishing, but only to the extent that the “trivial” alterations are such that, on the balance of probabilities, they might equally be made by other traders acting without improper motives.

10. With hindsight, I needed to go further in dealing with what I described as those sorts of “differences … that merely cause confusion”.  I did not, at the time, appreciate that it is the nature of the confusion which may arise that will decide if a trade mark proposed for registration falls into what I described, in paragraph 37, as the “third category” of trade marks that resemble an INN.

11. Delegates since Aventis have grappled with how to define, at a practical level, the initial threshold, in order to explain clearly, if that can be done, the extent to which a trade mark may resemble an INN before s 41(2) is triggered, resulting in either rejection (or, in an opposition, refusal) of the application or the need for evidence of use. 

12. What has been needed in such decisions, I think, is some additional explanation of just how deception, which is at the heart of the test for deceptive similarity, might manifest itself in trade marks that are based on a lesser degree of resemblance to an INN than is present in the two categories I have identified in paras 34-36 above.  As I will explain below, issues of alleged deceptive similarity with respect to an INN may have a level of subtlety that is easily overlooked in other situations, be they cases that involve shape marks, the colour of the goods or the more usual and more familiar comparisons of one distinctive trade mark with another where made under s 44.  I will address this below, with specific reference to where the present case sits in terms of the three categories of trade mark to which I have referred in paras 34-37.

13. It is immediately obvious that Clopidogrel is neither identical nor substantially identical to Clogrel, using the standard test set out in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 407 at 414-415. The trade mark, therefore, is not in the first category. Nor is it in the second. The extent of resemblance in the present matter is not such as to constitute a reasonable likelihood of deception resulting in an outright mistake; and nor will the imperfectly-recalled trade mark be likely to cause any such confusion. These are prescription goods, prescribed and dispensed by written order, and the extent of the differences will lean against any outright confusing of the two under such conditions.

14. This brings me to the third category.  I find that the public, or at least medical practitioners and those dispensing these goods, may recognize the source from which the trade mark Clogrel was coined.  I say “may” because there is no evidence on the point.  I am prepared to assume that “would” is more likely than “would not” given that the trade mark contains both a stem and a less-than-obscure reference to an INN; but either way the finding would be of no consequence, as will become obvious.  The critical thing is not so much that the relevant segment of the market would be aware of those similarities, but what persons in that sector would make of them.  What, in other words, will the similarities and differences, taken together, signify to those in the market?  To the extent that the relevant segment of the market finds there to be a resemblance between the trade mark Clogrel and the INN Clopidogrel, such people will also recognize that such an extent of resemblance is part of a pattern that is common enough[10], and connotes two things, viz:

    ·     the product is or contains Clopidogrel, and

    ·     this product is being offered to the public under a trade mark, Clogrel. 

    [10] On that point, I note Eremad’s evidence in answer to the opposition.  This shows that the practice is not at all unusual, as is also obvious from the state of the register and from Glaxo.

15. In other words, within the third category the consequences of resemblance between an INN and a trade mark are not a simple, one-dimensional issue.  Firstly, it is not sufficient to compare the trade mark to the INN by look and sound alone in order to decide if the opponent has established its ground.  The extent of the resemblance between the trade mark and the INN must not be assessed in isolation.  Resemblance, the effect this might have, and what it might connote, cannot be separated from the context of the goods for which the trade mark is proposed for registration.  This follows, I think, as a corollary of the ordinary tests for the comparison of trade marks.  See, for instance, Parker J in Pianotist Co's Appn (1906) 23 RPC 774, at 777.

    You must take the two words.  You must judge of them, both by their look and by their sound.  You must consider the goods to which they are to be applied.  You must consider the nature and kind of customer who would be likely to buy those goods.  In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks."

16. Secondly, and unlike Pianotist, what is at issue here is the connotations arising, not from a resemblance of one trade mark to another but from a resemblance between a trade mark and an INN.  It is the INN context that gives the present matter a level of complexity not present, or at least not obvious, in either s 44 or in typical s 41 cases involving such things as the shape of a sweet, the colour of the goods or an ordinary geographical term such as Michigan.  It is hard to imagine how a variant of a “conventional” sweet shape, or of the colour red for fire extinguishers, or of the word Michigan, could give rise to the twofold implications I set out in the paragraph 44[11]. 

    [11] If, however, the trade mark ORLWOOLA was proposed for registration in respect of sox and tested, now, against the benchmark of s 41, the issues to which I refer become obvious.  I stress, however, that this example is raised simply to illustrate the issues, not to signal any perception on my part that the examination of such trade marks is in need of change.  Other factors may add to, or reduce, the potential for confusion and those issues are set out in parts 29 and 26 of the Trade Marks Manual of Practice and Procedure.

17. The extent of the resemblance between Clogrel and Clopidogrel is such that there is real potential for confusion.  However, having already decided that this trade mark is not within the first or the second categories I have referred to above, it follows that any such confusion would centre on the nature of the goods to which the trade mark was applied.  Within the third category to which I have referred, such potential as there may be for deception or confusion lies only in the implication that arises from the extent of the resemblance between the INN and the trade mark.  Ultimately, the trade mark Clogrel is not deceptively similar to the INN Clopidogrel despite the extent of the resemblance on which the opponent relies.  This is because the nature of the goods on which the trade mark is to be used will ensure that the implication, which arises from the resemblance, is not false.  Confusion is thereby negated.  Thus, for the goods on which Eremad proposes to use its trade mark there will be no basis for any such confusion, and hence no basis for a ground of opposition under s 41 or 43.[12]

    [12] To complete the picture, I note that, were the goods not to contain Clopidogrel, the potential for deception would be realized and, using language that is more typically is applied to s 44, there would be a real and tangible basis for a ground of opposition under s 43, just as there would be with a trade mark in category one or two.

18. I believe that such a finding would also meet the concerns of the WHO observable in WHA 49.16, to which I referred in para 6 above.

19. I do not intend to put words into the mouth of the delegate in Glaxo, Susan Farquhar.  However, I think the only possible reading of decisions such as Glaxo that would sit comfortably with the law applicable to s 41 is to say that such decisions have expressly concerned themselves with setting out the practice that should be applied to trade marks in either categories 1 and 2 of the three categories I have identified.  Clogrel, on the other hand, is a case in category 3.

20. To conclude my analysis of the s 41 ground, I note that the same decision can also be reached by a more conventional first-principles application of the usual tests, without any reference to the language of deceptive similarity, as follows.  The comparison of the trade mark Clogrel, with a relevant INN, Clopidogrel, is a comparison of a made up word with a known and internationally recognised INN.  There is no evidence that anyone but Eremad has ever been inclined to use the sign Clogrel in trade in pharmaceuticals, and there is no particular need for other traders to remove the middle syllable from the generic term Clopidogrel in the course of their own legitimate trade in that compound.  So, from first principles, it can be seen that the trade mark Clogrel is capable of distinguishing.  Therefore, the s 41 ground relied on by the opponent is not established.  My decision in terms of s 41 would be consistent with the WHO concern to protect “the inherent rights that INNs hold in the public domain”. 

    Section 62A

21. Under section 62A, a trade mark may be opposed on the ground that the application was made in bad faith.  This ground of opposition is relatively new, having been available since 23 October 2006.  In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006, a non-exclusive list of examples of applications which may be in bad faith was given (at 4.12.1).  Those included “a pattern of registering trade marks that are deliberate misspellings of other registered trade marks”. These examples are also included in the Trade Marks Office Manual of Practice and Procedure at Part 46.5.8.

22. The opponent submits that where a party engages in a pattern of applying for trade marks for words that are both obviously derived from INNs, and deceptively similar to INNs, this is a circumstance in which the bad faith ground of opposition ought to be available.  The opponent argues:

    it is analogous to the “deliberate misspellings” example provided in the Explanatory Memorandum.

23. However, I do not accept the opponent’s analogy.  The opponent’s argument confuses obviousness of derivation with something much more sinister, the colorable imitation of a distinctive trade mark used by another trader.

24. The opponent attempts to draw support from an examination of the Trade Marks Office database (see appendix 1), which is said to establish a clear pattern of behaviour by Eremad.  The opponent alleges that Eremad “has adopted a consistent practice of applying to register trade marks that are both derived from and deceptively similar to the INN”.

25. This practice the opponent describes as:

    an apparently deliberate attempt by the applicant to obtain commercial gain by developing names that may be confused with the INN. That is, there can be no other explanation for the applicant’s conduct other than that the applicant perceives that the use of names that are as close as possible to the INN will provide its products with a commercial advantage. This is precisely the type of conduct that underscores the concerns of the WHO, in that it “endangers the principle that INNs are public property”.  In particular, the use of trade marks that are deceptively similar to INNS can dilute the INN system by creating confusion in drug nomenclature.

26. Drawing these threads together, the opponent argues that the registration of trade marks that are derived from and deceptively similar to INNs can thwart the coining of new INNs using the common stem.  The opponent draws support for this contention from the following statement from the WHO in Guidance on INN, supra.

    To avoid confusion, which would jeopardize the safety of patients, trade marks cannot be derived from INN and, in particular, must not include their common stems.  As already mentioned the selection of further names within a series will be seriously hindered by the use of a common stem in a brand name.

27. Ultimately, the opponent argues that in light of the:

    a) similarities between the CLOGREL and Clopidogrel
    b) inclusion of the INN stem “-grel” in the trade mark; and
    c) the applicant’s pattern of conduct,

    the section 62A ground of opposition has been established. However, I have found both that CLOGREL is capable of distinguishing the applicant’s goods and that it will not cause deception or confusion. This disposes of the opponent’s case under s 62A. While I appreciate the concerns expressed in various ways by the WHO, I believe that the proper application of section 41 will strike an appropriate balance between the legitimate needs of traders, on one hand, and their commercial objectives on the other. If it were to be true that Eremad was in the business of getting close to the wind in terms of s41, this would simply illustrate the need for, and importance of, both the examination and opposition systems under the Act, and of s 92 to allow removal of unused trade marks from the register.

    Conclusion and Costs.

28. The opponent has not established either of the grounds of opposition on which it has relied.  The trade mark application may proceed to registration one month from the date of this decision.  If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur unless the court so orders or the appeal has been discontinued.  I award costs, in terms of the scale, against the opponent.

    T. E Williams
    Hearing Officer
    18 August 2010

    Appendix 1

Application No.	Trade Mark	INN	STATUS
964566	AMLO	AMLODOPINE	Withdrawn
1077033	OXATIN	OXALIPLATIN	Lapsed
1077034	OXALATIN	OXALIPLATIN	Registered
1107031	VEDILOL	CARVEDILOL	Registered
1107032	MELOX	MELOXICAM	Registered
1108385	PRAVSTAT	PRAVASTATIN	Registered
1108390	PRAVAT	PRAVASTATIN	Lapsed
1132117	MOMASONE	MOMETASONE	Registered
1184196	PANTOP 20  PANTOP 40	PANTOPRAZOLE	Registered
1184193	PRAZEP	PRAZEPAM	Registered
1185953	CLOPID CLOPID 75	CLOPIDOGREL	Withdrawn
1194114	GEMCITE	GEMCITABINE	Registered
1218763	PAXEL	PACLITAXEL	Lapsed
1228926	OXAPARIN	OXAMARIN	Withdrawn
1239823	FOSZIDE 20/12.5	FOSENAZIDE	Withdrawn
1239825	FOS-ZIDE 20/12.5	FOSENAZIDE	Withdrawn
1261177	OSTRON	ONANDSETRON	Registered
1274578	PANTAC	PANTENICATE	Withdrawn
1286107	CLOVIX CLOVIX 75	CLOVOXAMINE	Withdrawn
1289385	CLAVIX	CLOVOXAMINE	Withdrawn
1290476	VANCOM	VANCOMYCIN	Registered
1290477	V-MYCIN	VANCOMYCIN	Pending
1290488	T-CAN	IRINOTECAN	Registered
1290490	TECAN	IRINOTECAN	Registered
1290491	IRINO	IRINOTECAN	Pending
1338222	GEMCITE SOL	GEMCITABINE	Pending
1338224	GEMCITE RTU	GEMCITABINE	Pending
1338228	GEMCITE AQ	GEMCITABINE	Pending