Trade marks which contain an -INN stem are often difficult to register – but not necessarily impossible.
What is an -INN stem?
-INN stems are recognised generic names for particular pharmaceutical substances. An -INN stem indicates to which pharmacological group a pharmaceutical substance belongs.
-INN stems and trade marks
The Australian Trade Marks Office (ATMO) checks the trade mark against the –INN listing, and if it considers the mark has an obvious derivation (or meaning) of an –INN, an objection will be raised. Examples of marks of obvious derivations are: -flurane EXIFLURANE, -mycin TRIPTOMYCIN.
On the other hand a stem which is not an obvious derivation will be accepted. For example, -ast PAIN GOES FAST, -quin(e) HAPPY EQUINE.
The Latest Development
The recent decision in the case of Boehringer Ingelheim Vetmedica GMBH, regarding the trade mark SERAQUIN, provides some insight into the decision making process of the ATMO when examining trade marks containing an -INN stem1.
This Australian application was designated from an International Registration which had already been granted protection in several jurisdictions including USA. The trade mark was also registered nationally in several countries including the European Union and New Zealand.
In this case, the -INN stem was -QUIN which, according to the Examiner, indicated that the goods are or contain QUINOLINE derivatives. At hearing, the Applicant successfully overturned the Examiner’s initial finding, arguing that the stem -QUIN(E) was deleted from the General Principles in about 1974,2 and that the stem –QUINIL is now used to identify QUINOLINE derivatives rather than -QUIN.3
Lessons –INN future applications
The Delegate took into consideration several factors in determining whether the application should be accepted, which may be useful in deciding whether your own application is likely to be accepted:
- use of the suffix –QUIN in relation to pharmaceuticals which do not accord in any way with the connotation in the –INN stem, was relatively widespread in the Australian marketplace;
- the availability of comprehensive Australian Federal and State laws relating to conduct which is misleading or deceptive; and
registration was permitted in other countries, including countries which have pharmaceutical markets similar to Australia – in this regard, reference was also given to:
- the maturity of the Australian marketplace; and
- the regulatory regime within the marketplace.