Australia qualifies the use of INN stems in trademarks

The Australian trademark authorities refused the trademark ZELCIVOL of Boehringer Ingelheim in Class 5 for pharmaceutical preparations. This because of the fact that the trademark contains the INN stem OL.  According to section 43 of the Australian Trademark Act 1995 a trademark may be refused if it consists of an INN stem that causes confusion or will mislead with respect to the applied description of goods in class 5. Boehringer objects the decision. The Hearing Officer cancelled the decision of the trademark office and explained in which way INN stems are acceptable in trademark. 

In first instance the trademark ZELCIVOL was rejected because it contains the element OL. This element is mentioned in the list of the World Health Organization as a common INN stem. Ol refers to Alcohol and Phenol. Pharmaceutical preparations that belong to the same therapeutic group or chemical class have generally a similar word element in their substance name. This element is called an "INN stem".

A trademark may be refused if it contains an INN stem that may lead to confusion or deception in connection with the goods in class 5. The trademark ZELCIVOL is applied for pharmaceutical preparations and therefore no specific medical indication was mentioned. The mark would be accepted if the goods were limited in such a way that the product has an alcohol or phenol functionality in the molecule structure.

Boehringer did not agree with the decision of the trademark office and argues that ZELCIVOL had to be accepted. The hearing officer examined the use of INN stems in trademarks and the exceptions of the rule. An INN stem in a trademark is in fact allowed (1) if it has a meaning. And (2) if the INN stem is used in a trademark in such a way that the public does not recognize the element as an INN stem. The Hearing Officer also looked at the registered trademarks and noticed an inconsistency regarding the acceptance of trademark containing INN stems, like OL, without a specific limitation of goods.

The Hearing Officer determined that the trademark ZELCIVOL has to be considered as a whole. The name ZELCIVOL will be adopted as a trademark and not as a generic name. The Hearing Officer also took into account that other national trademark offices have already accepted ZELCIVOL. The Australian trademark office currently considers their approach towards trademarks in class 5 consisting of an INN stem. The Hearing Officer drafted up a list in which way the examiners have to deal with the exception rule regarding INN stems in trademarks. Trademarks are likely to be accepted if:
• A suffix is not only an INN stem but also a well-known abbreviation (such as: AL = Albania)
• The INN stem is 2-3 letters (such as: kin, ol al, ur, vir),
• The trademark contains other or alternative suffixes (such as: sum, one)
• The INN stem in the trademark is used in such a manner that the element is not perceived as an INN stem (e.g.: ZELCIVOL. Looking at: the emphasis, co-or vowels in relations to the element, length of the word, etc).

It is a relief for the pharmaceutical industry since they now have more alphabetical possibilities creating a trademark for their new medicines. The creation of pharmaceutical trademarks is already difficult enough since the Health Authorities also judge the acceptance of trademarks. It is a further step towards the judgement of pharmaceutical trademarks on absolute grounds between the trademark office and the Health Authorities. A rejection in an earlier stage such as the trademark registration phase has fewer consequences for marketing introduction than in a later stage such as the product registration phase. However we have to wait if this liberal course will be picked up by the Australian Trade Mark office in future cases as well.


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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?