Pharmaceutical companies seeking to register trade marks containing an International Non-proprietary Name (“INN”) will be pleased to learn of the recent decision issued in the case of Health World Limited  ATMO 43. The decision confirms the trend in IP Australia’s practice to adopt a flexible and practical approach when considering whether a trade mark containing an INN stem is likely to deceive or cause confusion as a result of the INN stem having a connotation.
In the case, Health World Limited sought to register the mark OESTROEASE in relation to oestrogen deficiency preparations, including estrogens and substitutes for estrogens. The Examiner objected to the application on the basis that the prefix ‘oestr’ closely resembled the INN stem for estrogens, namely ‘estr’. The Examiner argued that the mark, therefore, connoted goods which contain estrogens and would be likely to deceive or cause confusion if it was used upon goods which do not contain estrogens.
The Applicant exercised its right to be heard and the matter came before Ms Nicole Worth, a Delegate of the Registrar of Trade Marks.
On appeal to the Delegate of the Registrar of Trade Marks, there were two key questions: (1) Did the mark possess a connotation regarding the content of the goods; and, (2) was that connotation likely to deceive or cause confusion?
Connotation Possessed by the Mark
The Delegate held that the way the trade mark OESTROEASE was constructed, it did not necessarily connote that the goods contain estrogen. Rather, the trade mark conveyed the intended purpose of the goods, namely that they ease symptoms associated with menopause or the estrus cycle. Of importance in this assessment was the fact that the trade mark combined the “estr” stem with the well-known English word “ease” which means “comfort”, “absence of pain or discomfort”, “relief” and “alleviation”.
Likelihood of Deception or Confusion
The Delegate held that the mark OESTROEASE was not likely to deceive or cause confusion when used upon pharmaceutical or medicinal goods not containing estrogens. In arriving at her conclusion, the Delegate considered the following factors:
- State of the Register. The Delegate noted that several registered trade marks containing the stem “estr” existed, none of which are registered under conditions that restrict their use to accord with the INN stem ‘estr’.
- State of the Australian marketplace. The Delegate noted that there were products in the Australian market, such as ‘Estro Balance’ and ‘Estro-sense’, which did not contain estrogens and were still named in a manner similar to the Applicant’s goods.
- Familiarity of health professionals (who were most at risk of being deceived) with menopause-related products which may or may not contain estrogens but nonetheless utilise the INN stem ‘estr’.
- Manner of sale of menopause relief products. The Delegate noted that several menopause relief products were available without prescription (particularly ‘herbal’ or plant-derived products, such as that of the Applicant) thereby bypassing the very audience most likely to be confused by the presence of the INN stem.
As a result, the Delegate held that the Applicant’s mark was registrable and did not believe a restriction regarding the use of the trade mark was necessary.
Implications for Brand Owners
IP Australia’s flexible approach to assessing trade marks containing INN stems favours brand owners in the pharmaceuticals, veterinary and pesticides field.
Now would be a good time for brand owners to review their trade mark portfolios and assess what trade marks can be protected in light of the more flexible approach. We also recommend reviewing any pending applications faced with an INN stem objection to see whether further submissions or requesting a hearing might be able to overcome the objection.