In our earlier Thinking piece (here) we discussed a decision relating to the registrability of the ZELCIVOL mark in Australia. That application faced objection based on it containing the INN stem “OL”. It was said that the mark would be likely to confuse the relevant public unless the specification was limited to goods that accord with the stem. In the result, ZELCIVOL was accepted without restriction or endorsement, based on consideration of a number of factors that have now been captured in the AUTMO’s Practice Manual (Part 29.4).
There were then two additional cases in early 2013, in which it was also decided (contrary to the examiner’s view) that the grounds under s43 did not obtain, as against SERAQUIN and CELOMID. In each case it was held that the stem was not meaningful in the context of the overall mark, such that the use of the marks would not result in confusion.
We now have two more cases involving marks containing INN-stems in mid-2013, and perhaps of most interest is the decision in which the objection was maintained.
Ceva Sante Animale applied for SYNCROSTIMin respect of veterinary products in class 5.
The examiner raised an objection on the basis that the suffix –STIM is listed as an INN stem indicating that the goods upon which it is used consist of colony stimulating factors.
It was argued by Ceva that:
- STIM was obviously derived from a descriptive verb (“stimulate”);
- consumers would simply think that “the product acts to stimulate a beneficial reaction within the animal’s body”;
- consumers would not break down the name and thus identify –STIM as a distinct element;
- veterinary professionals would be highly trained, would see the list of active ingredients, and would recognize branding practices for pharmaceuticals, reducing the risk of confusion.
In support of its arguments, Ceva filed evidence of:
- 17 marks in class 5 of the Australian trade marks register that contain the suffix –STIM;
- marks in class 5 of the Australian trade marks register that contain the part word STIM;
- a list from PUBCRIS of product names containing STIM;
- the results of an ARTG search for product names containing the suffix STIM.
There was no evidence as to whether any of these names were for colony stimulating factor drugs.
This was not sufficient to persuade the Delegate of the Registrar.
- The Delegate considered that consumers would break the mark into two elements, SYNCRO and STIM, and that the four letters that comprise “STIM” are “an unusual combination in the English language”.
- The Delegate also referred to the fact that the goods are prescribed by highly trained health care professionals as being a double-edged sword, as those professionals are more likely to recognize and rely on INN stems.
Overall, the Delegate considered that the STIM stem was meaningful in the SYNCROSTIM mark, and gave the connotation that the mark contained colony stimulating factors:
“ … 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 cannot 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”
The application for SYNCROSTIM was rejected.
Health World Limited applied for OESTROEASE in relation to “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” in class 5.
The examiner raised an objection on the basis that the mark contained OESTR, which is very similar to the INN stem “ESTR”. The examiner offered to accept the application if the goods were limited to those containing estrogens. However, it was recognized that it would not be appropriate to do so. Based on her own research, the Delegate concluded that the Applicant’s goods “rather than containing estrogen, contain compounds to ease the effects of the fall in estrogen in the human body”.
In allowing the application to proceed to acceptance for all of the goods, the Delegate took into account that:
- the use of “ESTR” in the OESTROEASE mark did not necessarily connote that the products contained estrogen;
- there are at least four products in the Australian market that do not contain estrogens and that are named in a manner similar to the Applicant’s goods (namely Estro Balance, Estro-sense, Estro-EZ and Estro-Ease);
- the mark was not constructed in the manner typical for the name of a pharmaceutical substance;
- the mark appeared to convey the intended purpose of the goods, namely that they ease the effects of the fall in estrogen which occurs during menopause.
In line with the comments of the (different) Delegate in the SYNCROSTIM decision, this Delegate referred to health professionals as being those at greatest risk of being confused. On the other hand, the Delegate took into account that many menopause relief products are available without prescription (though it is worth noting – and the Delegate acknowledged this – that the specification was not limited in this manner).
The Delegate was not satisfied that the mark would cause confusion when used upon pharmaceutical or medicinal goods not containing estrogens, and the application was accepted without restriction or endorsement.
The decisions serve to confirm that the considerations under s43 for marks containing INN-stems are highly fact-specific, taking into account the meaningfulness of the stem within the overall mark.
Given the importance of factual considerations, it is perhaps surprising that evidence from a health professional has not been relied on in any of the cases relating to marks containing INN-stems for which decisions have been handed down in 2012 or 2013. Such evidence may clearly have a bearing on the determination of whether health professionals are, in fact, at greater risk of confusion in cases such as these.
Click here to view table.