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.
