Menarini Industrie Farmaceutiche Riunite S.r.l. [2017] NZIPOTM 5 (8 February 2017)


Menarini Industrie Farmaceutiche Riunite S.r.l (“Menarini”) applied to register the mark KETUM in relation to an“anti-inflammatory drug used to ease joint and muscle pain” in class 5.

The New Zealand Trade Marks Office (“IPONZ”) objected to the acceptance of the mark on the grounds of descriptiveness and non-distinctiveness.

IPONZ pointed out that its research showed that “KETUM” was a recognised name for the Mitragyna speciosa species of plant, being a plant commonly used for medicinal properties.

Menarini’s main arguments in response to the objection were that (i) Ketum was a Malay term, (ii) its goods had no connection with the Mitragyna speciosa species of plant, and (iii) KETUM was an invented word when used in relation to the applied for goods. Menarini also offered to amend the specification to specifically state that it does not contain compounds or derivatives from the Mitragyna speciosa species of plant. IPONZ rejected the Applicant’s request on the basis that the suggested amendments may lead to consumer confusion.

The Assistant Commissioner referred to IPONZ’s practice guidelines which state that when assessing the registrability of a foreign word, a relevant consideration is whether the foreign language concerned is generally known to the relevant class of persons, being a class of persons in New Zealand. On this, the Assistant Commissioner noted that there was nothing to indicate that the meaning of the Malay word KETUM would be readily apparent to the average person in New Zealand.

As a further note, while IPONZ provided examples of Internet references to KETUM being used as a name for the Mitragyna speciosa species of plant, the Assistant Commissioner pointed out that none of the webpages relied on by IPONZ were from New Zealand websites, and none appeared to target or address New Zealand consumers.

The Assistant Commissioner allowed the mark to proceed to registration.

To view the Office decision, click here.

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