The decision of Eremad Pty Ltd v Sanofi-Aventis (2009) 84 IPR 647 (Eremad) concerned an opposition to the registration of the pharmaceutical trade mark, ‘Oxalatin’. The grounds relied on at the hearing are found in ss 41 and 43 of the Trade Marks Act 1995 (Cth) (Act), namely that it was not ‘capable of distinguishing the applicant’s goods or services’. The Trade Mark bore a striking resemblance to the International Non-proprietary Name (INN) ‘Oxaliplatin’.
When making his determination the Hearing Officer held that it would be inappropriate to give weight to official policies of the World Intellectual Property Organisation (WIPO) and the World Health Organisation (WHO) and allowed the registration of the Trade Mark to proceed, albeit with certain conditions attached.
The facts of Eremad
In 2005 Eremad Pty Ltd (Applicant) applied to register the word Trade Mark ‘Oxalatin’. The word contains a pharmaceutical component, ‘Oxaliplatin’, which the WHO had registered as an INN. Sanofi-Aventis (Opponent), who produced a similar product to the Applicant under the Trade Mark ‘Eloxatin’, lodged a notice of opposition under s52 of the Act. The primary ground relied on by the Opponent at the hearing was that the proposed trade mark was not ‘capable of distinguishing the applicant’s goods or services’ pursuant to s41 of the Act.
INNs are generic names granted by the WHO to identify pharmaceutical substances or active pharmaceutical ingredients. An important feature of the INN system is that the names of pharmacologically-related substances demonstrate their relationship by using a common ‘stem’. A stem is usually a suffix, but can also be a prefix or a combination of infix and a suffix. In relation to the INN ‘Oxaliplatin’, ‘platin’ is the stem.
INNs are held by the WHO and WIPO to be public property and they both have a policy against the incorporation of INNs within registered trade marks. The primary reason for this policy is to prevent potentially disastrous confusion among healthcare professionals and patients. These policies were given some weight in the earlier decision of IP Australia in Glaxo Group Ltd v Pathstream Ltd (1987) 9 IPR 95.
Treatment of International Non-proprietary Names in Eremad
The Opponent’s s41 opposition claimed that ‘Oxalatin’ was incapable of distinguishing the Applicant’s product owing to its similarity to the INN ‘Oxaliplatin’. In making this argument, the Opponent made reference to WIPO policy that applications for registration of trade marks should be increasingly rejected if they are similar to INNs. Extensive reference was made to the fifth report of the WHO Expert Committee on the Use of Essential Drugs (November 1991), in which the following was stated:
The procedure for selecting INNs allows manufacturers to contest names that are either identical or similar to their licensed trade marks. In contrast, trade mark applications are disallowed, in accordance with the present procedure, only when they are identical to an INN. A case for increased protection of INNs is now apparent as a result of competitive promotion of products no longer protected by patents.
Based on this policy, and recent Federal Court authorities, the Opponent argued that the relevant test for determining a s41 opposition should be whether or not the trade mark is ‘deceptively similar’ to the INN, effectively lowering the bar from the accepted test of ‘confusingly similar’. The Hearing Officer refused to give weight to the WHO and WIPO policies at [22], stating that ‘under s55 of the Act the establishment of a ground of opposition is to be determined by legislation and precedent, not policy’. This claim was consistent with previous practice by other IP Australia Hearing Officers.
The Hearing Officer placed emphasis on the letters ‘IPL’ in INN which he considered:
It is understandable that to a lay person ‘Oxaliplatin’ and ‘Oxalatin’, on their face, appear to be almost identical other than for the letters ‘IPL’ being inserted into ‘Oxaliplatin’.
The relevant test in determining whether or not to permit the registration of a trade mark which may contravene an already registered trade mark is whether, on a side-by-side comparison, the differences between the two trade marks are obvious. The Hearing Officer’s emphasis on the letters ‘IPL’ meant that, in his opinion, the differences between the two Trade Marks, as listed at points 1 and 2 above, were obvious.
The Hearing Officer also distinguished the precedents as being relevant only to ‘shape’ trade marks, not ‘word’ trade marks at [19]. He then went on to determine that the application could proceed to registration on the condition that the ‘trade mark will be used only on goods containing the pharmaceutical Oxaliplatin’.
The emphasis by the Opponent on the WIPO publication appears to have been misconceived. Relevantly, the publication clearly states that trade mark applications should be disallowed only when they are identical to an INN.
Conclusion
The decision of IP Australia in Eremad is significant for the limitations it places upon opposition to applications for trade mark registration. While to most of us a seemingly obvious similarity between a proposed trade mark and existing trade mark may seem to warrant an opposition application, the following should be kept in mind:
in what context will the trade mark be used?; and
In this case, the Hearing Officer considered that ‘the Oxalatin mark contained an inherent connotation (by virtue of its likeness to the INN Oxaliplatin) that would be likely to deceive or cause confusion if it was used on pharmaceuticals which did not contain the Oxaliplatin drug’. Accordingly, a restriction was placed on the Trade Mark that it can be used only for goods containing the pharmaceutical Oxaliplatin.
Whilst this case is peculiar to pharmaceuticals in that it relates to an INN, the more far reaching consequences of this decision are that until the policies of WIPO or other worldwide intellectual property organisations are enshrined in Australian legislation, it is unlikely that they will be a factor which will be considered by IP Australia in determining whether or not to register a trade mark.
Until these issues are tested in the Federal Court of Australia, it is likely that this decision will be followed by other Hearing Officers.
For further details on this case and its implications, please contact:
Wayne Zappia on 08 9288 6931 / mailto:wayne.zappia@lavanlegal.com.au or
Darren Zusman on 08 9288 6734 / darren.zusman@lavanlegal.com.au.
