The Australian Trade Marks Office has, in recent years, taken a very strict approach with regard to pharmaceutical trade marks that include a word having an INN stem. However, recent Australian Trade Marks Office decisions appear to indicate a shift in Office practice.
The Office decisions in Boehringer Ingelheim International GmbH (2012 ATMO 117) and Health World Limited (2013 ATMO 43), appear to have distilled a number of principles that should be followed when determining whether a trade mark (in the circumstances described above) is likely to lead to deception or cause confusion and, thus, be objectionable under section 43 of theTrade Marks Act 1995 (Cth).
These principles, as stated in Boehringer Ingelheim’s application, are:
Where most of the following factors are present:
a. The suffix is in common use other than in its INN-stem connotation, as evidenced by both the:
i. state of the Register;ii. and the marketplace.
b. The INN-stem is two or three letters long;
c. There are other or alternative obvious suffixes present in the trade mark; and
d. The INN-stem is non-specific – that is, in the context of the trade mark under consideration the INN-stem would not be generally apprehended as indicating only a particular kind of pharmaceutical because the ‘prefix’ does not conform with the usual formulation specific to the INN-stem under consideration.
a section 43 ground should not be raised as it is unlikely that the use of the INN-stem would deceive or cause confusion.
Similar principles were applied in Health World Ltd’s application and in addition the following questions were also considered relevant:
a. How familiar are health professionals, who are considered most at risk of being deceived, with the relevant products that may contain the INN stem; and
b. Does the manner of sale support that deception or confusion is not likely? For example, are there similar non-prescription goods that contain the same INN stem that serve the same purpose.
If only one or two of the above principles are applicable, the Office will most likely uphold an objection under section 43. However, when three or more of these principles are applicable, the Office should withdraw an objection under section 43.
This signals a more fluid, logical and less rigid approach by the Office and is good news for pharmaceutical companies who may have previously encountered insurmountable issues when attempting to register its pharmaceutical brands in Australia.