In the May 2013 edition of LL&P, we
featured a case note relating to the
registrability of marks containing INN
stems in Australia. In particular, the mark
ZELCIVOL 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).
Since then, a number of decisions relating
to marks containing INN stems have been
handed down. The two most recent cases
related to the marks SYNCROSTIM and
OESTROEASE.
SYNCROSTIM
Ceva Sante Animale applied for
SYNCROSTIM in 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 colon
stimulating factors.
Ceva argued that STILL was obviously
derived from "stimulate", and that
"-STIM" would not be seen as a distinct
element. Further, the relevant consumers
were highly trained and so were unlikely
to be confused. In support, Ceva filed
evidence of existing registrations in class 5
that contained the suffix "-STIM", and a
list from PUBCRIS of product names
containing STIM.
This was not sufficient to persuade the
Delegate of the Registrar. It was
considered that the mark would be
broken down 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 considered
that highly trained practitioners were in
fact more likely to recognize and rely on
INN stems, which was a factor tending to
increase the risk of confusion. Overall, it
was considered that the "-STIM" stem
was meaningful in the SYNCROSTIM
mark, and the examiner's objection was
upheld.
OESTROEASE
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".
It was recognized that limiting the
specification to goods containing
estrogens would not be appropriate, as
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. In fact, 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.
The Delegate also took into account that
there were 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).
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.
The Delegate was not satisfied that the
OESTROEASE mark would cause
confusion when used upon pharmaceutical
or medicinal goods not containing
estrogens, and the application was
accepted without restriction or
endorsement.
Comment
These two decisions serve to confirm that
marks containing INN stems may still face
problems under Australian practice. The
issue as to whether the relevant public is
likely to be confused is highly fact specific,
and will take into account the
meaningfulness of the stem within the
context of the overall mark.
Recent Australian decisions
relating to marks containing INN
stems
Bill Ladas, Corrs Chambers Westgarth, Australia
11
ITMA'S
AUTUMN
SEMINAR
BIRMINGHAM
10 October, 2013
continued from previous page
Arguably, international companies may
benefit from increased standardisation of
ingredient names across their packaging,
despite an increase in costs initially. With
the TGA's medicine labeling and packaging
review still under way (for more
information, see our article from the
December 2012 issue of LLP)
pharmaceutical businesses will still need to
co-ordinate a number of changes to their
packaging and branding. If the TGA adopts
its proposed labeling and packaging
changes, Australian products will,
regardless, need to comply with different
requirements. We note that to date the
TGA has not publicly released any further
information on the progress of the review
since the initial analysis of submissions was
released in January this year.
Submissions to the TGA on the
harmonisation of ingredient names closed
on 10 July 2013. At the time of writing, no
further information regarding the number
of submissions or key themes has been
released.
PTMG 88th
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LONDON
17 18 March, 2014
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