Australia: Boehringer Ingelheim - A Welcome Decision for Pharmaceutical Brand Owners

Pharmaceutical brand owners have cause to celebrate following a recent decision regarding the trade mark applications for marks incorporating INN stems in class 5.

Brand owners in the pharmaceutical space have cause to celebrate after a decision of Hearing Officer Ian Thompson, in the Boehringer Ingelheim case. The case involved a trade mark application for the mark ZELCIVOL in relation to pharmaceutical preparations in class 5.

As is commonly the case, the registry rejected the case on the basis that the mark contained an INN stem for goods that don't contain "phenols" or "alcohols". It was considered the mark would be likely to deceive or cause confusion.

Boehringer refused to enter an endorsement against its application and took the matter to a hearing. The Hearing Officer considered a number of arguments and particularly first looked at the current office practice at the Australian Trade Marks Office in relation to marks containing INN stems. The practice looks at whether the stem is a meaningful contribution to the mark and whether it may be perceived as a stem within the context of the mark overall.

The Trade Marks Office Manual provides examples of where the INN stem is meaningful such as EXIFLURANE in which FLURANE is an INN stem. There are also examples of where the mark does not contain the stem in a meaningful way such as PAIN GOES FAST in which AST is an INN stem. The objection wouldn't be raised in those circumstances.

After considering the manual and the practice, Hearing Officer Thompson considered the arguments of Boehringer. He was taken by the arguments that there are many marks on the register and in the market itself that contain OL that do not accord with the INN stem. There were examples such as TYLENOL and SORBITOL in evidence.

The Hearing Officer also took into account the fact that OL would be seen as a diminutive within the context of the ZELCIVOL mark as a whole. That is, it would look like a pharmaceutical name but not as indicating the type of pharmaceutical product. The Hearing Officer also took into account the fact that the international registration that Boehringer had filed had not received the same objection in various other territories and that was also the case with various national registration in other territories. All in then, the Hearing Officer decided that no endorsement should be entered against Boehringer's application.

The decision is a welcome one for the pharmaceutical community. There have been a lot of inconsistent decisions from the Trade Marks Office in relation to marks containing INN stems. Of course the fact that this decision has been made on these particular facts doesn't mean that every mark containing an INN stem will not be accepted without an endorsement.

Consideration should be given to the particular factors that the delegate took into account in this case. Having said that the decision provides you with an opportunity to have another go in cases where an INN stem objection has been raised in cases where applications have been rejected, new filing should be considered. In live cases perhaps it is a time for another round of submissions to the office referring to the Boehringer case.

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