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Australia qualifies the use of INN stems in trademarks

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 Knowledge Quiz Designs

The plaintiff specializes in online sales of children's bicycles. In safeguarding its rights, the company has registered the design of these bicycles under Community Design. Through a multiple design registration, the company secures the rights for 10 new versions of its children's bicycles simultaneously under Community Design. Subsequently, when the defendant introduces a similar bicycle, legal proceedings ensue. Among the various claims, the plaintiff alleges infringement of its design rights, which in turn is contested by the defendant. A design must possess novelty and individual character. The defendant states that the design lacks novelty, as elements of this design are already present in various existing bicycles. Essentially, the defendant's bicycles reproduce these elements, resulting in a lack of individual character. According to the defendant, the community designs are thus invalid. Even If the plaintiff's designs should be valid, the defendant argues that its bicycle deviates sufficiently. The defendant argues that the plaintiff has sought protection for more or less similar designs in the multiple design registration. Apparently, the plaintiff believes that these designs differ enough to create a different overall impression. The defendant's bicycles deviate just as much, thus creating a different overall impression (the so-called doctrine of equivalents argument). The question arises: are the plaintiff's bicycles valid designs despite comprising known aspects from various bicycles, or does the defendant's design exhibit sufficient deviation, thereby enabling the invocation of the doctrine of equivalents concerning the multiple design registration? The court determines that designers of children's bicycles enjoy considerable freedom in their designs. Consequently, if another bicycle lacks significant distinctions, it will quickly evoke a similar overall impression for the informed user, thereby lacking individual character. The comparison is drawn between the new design (the AMIGO bicycles from T.O.M.) and an older existing design (bicycle). To prove that a design is not new, you cannot, as Prijskiller (the defendant) asserts, mosaic together various elements. Therefore, as a defendant, you cannot argue that a design is not new because its characteristics are present in various different products (see also the judgment Karen Millen). If, as a designer, you combine different aspects from multiple designs for the first time into a new product, then this is simply a new and valid design. This is the case with the AMIGO bicycle. The design is upheld as valid. The AMIGO Magic bicycle features a unique tubular frame, rendering it novel. The bicycle is further distinguished by the name MAGIC, the chain guard design, and accessories such as a basket, handlebar streamers, and doll seat. Prijskiller contends that its frame shape differs (being thicker) and that the drawings are positioned differently. Additionally, Prijskiller highlights the distinct color scheme; however, TOM has registered the designs in line drawings, thus disregarding this element in the evaluation. Nevertheless, several similarities are apparent. Both bicycles exhibit an almost identical pattern of butterflies and flowers, positioned nearly identically on the frame. Furthermore, the name MAGIC is depicted in the same font and placement on the chain guard. Consequently, this bicycle fails to evoke a different overall impression for the informed user. The designer's extensive creative freedom in designing children's bicycles means that the differences highlighted by Prijskiller are minor and inconspicuous. Prijskiller's invocation of the doctrine of equivalents is likewise dismissed. The court opines that this case pertains to models concurrently deposited by T.O.M. This circumstance precludes the invocation of the "doctrine of equivalents" because, in compliance with the regulations regarding novelty, individual character, and the grace period, the various models cannot diminish each other's novelty or individual character, nor their scope of protection. In essence, in simultaneous (multiple) deposits, the "doctrine of equivalents" holds little significance. Consequently, these 2Cycle Magic bicycles fail to impart a different overall impression for the informed user. The designer's extensive freedom in designing children's bicycles and the minor differences highlighted by Prijskiller render the infringement claim upheld.
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