4. Factors to consider when assessing section 43

Date Published

If the trade mark, or some part of the trade mark, contains a connotation that would be likely to deceive or confuse consumers within the relevant market, then a ground for rejection should be raised.

4.1 Geographical indications for wine

For details of examination practice relating to class 33 applications see Part 32B.


4.2 Plant variety names

If a trade mark contains or consists of word/s which connote a particular plant variety or other plant name, and is applied to plants or plant materials of the same or a closely related genus, it is likely to deceive or cause confusion as to the true nature of those plants or plant materials and a ground for rejection under section 43 of the Act will be appropriate.

For details of practice in examination of applications for registration of trade marks covering plants and/or plant materials in class 31 see Part 32A.


4.3 International Non-Proprietary Names (generic names for pharmaceutical substances) and INN stems

INNs

In the 1950s the World Health Organisation (WHO) began a program of identifying each pharmaceutical substance by a unique, universally recognisable name to be known as an International Non-Proprietary Name or INN.  The system aims to promote safety for health professionals and the public in the identification, prescription and dispensation of pharmaceutical substances throughout the world.  The INN is effectively the generic name for the substance and therefore should be open for use by anyone in a descriptive context.

At regular intervals the WHO notifies member states of names to be protected. When examining trade marks, IP Australia is aware of the need to prevent use of INNs (and words that may connote an INN) in a manner that is likely to deceive or cause confusion.

The procedure for the selection, use and notification of INNs can be found in the WHO publication International Non-Proprietary Names for Pharmaceutical Substances available on the WHO website.

The INN list is included on the Trade Marks electronic database under the heading Search For Pharmaceutical Names (SFPN) and as a Search Tool on the Australian Trade Mark Search on the IP Australia website.  The INN list shown there is updated periodically based on advice from the WHO.

INN stems

The INN system also governs the use of common, descriptive stems given to families of pharmacologically related substances (e.g. the word element "astine" for antihistamine preparations).  Accordingly, improper use of an INN stem in a trade mark may lead to deception or confusion.

A list of INN stems has been developed with each stem relating to a particular group of pharmaceuticals.  These stems (listed at Annex 1 to this Part) should not be used in trade marks for pharmaceuticals or veterinary substances other than those indicated by the INN stem.

Stems can be prefixes, suffixes or infixes - this is denoted by the position and presence of hyphens in the list of INN stems. For example:

  • -PROFEN is a suffix

  • CEF- is a prefix
  • ESTR is an infix that could appear anywhere in a word (including at the start or end)
  • -KEF-  is an infix that should appear within the word.


Examining trade marks containing INNs and INN stems

When examining applications for registration of trade marks in class 5 covering pharmaceuticals or veterinary substances, examiners should check the trade mark against the INN list using the Search for International Nonproprietary Names for Pharmaceutical Substances and the list of INN stems found at Annex 1 in this Part of the Manual.

Claims for specific pharmaceutical or veterinary goods in Class 5 may also trigger the provisions of section 43 in relation to INNs and INN stems.  Examples include classes of pharmaceutical or veterinary substances (e.g. analgesics or pain relieving preparations) as well as goods which could be pharmaceutical or veterinary in nature (e.g. dietary or nutritional supplements).

4.3.1 Section 43 ground for rejection in relation to INNs

A ground for rejection under section 43 exists where a trade mark, or part of a trade mark, to be used in relation to pharmaceuticals or veterinary substances is the same as, or may connote, a notified INN and use of the trade mark in respect of the goods covered by the specification are not restricted to the particular substance indicated by the INN. Use of such a trade mark would be likely to give rise to deception or confusion.

Determining whether a non-identical trade mark connotes an INN will depend on the particular circumstances of the case. However, if a trade mark is an obvious derivation of an INN, a connotation is likely to exist. See Aventis Pharma v Alphapharm Pty Ltd (2005) 65 IPR 634 (TM ROXIMYCIN and INN ROXITHROMYCIN) and Sanofi-Aventis v Eremad Pty Ltd [2009] ATMO 97 (TM OXALATIN and INN OXALIPLATIN) where both were found to contain a connotation which would be likely to cause confusion or deception if the goods did not contain the drug specified in the relevant INN.

A section 43 ground for rejection may be overcome by the applicant agreeing to a condition of registration limiting use of the trade mark to goods containing the substance indicated by the relevant INN. The endorsement suggested by the Registrar in these circumstances is:

It is a condition of registration that any use in respect of pharmaceuticals will be limited to such goods containing the substance designated by the International Non-Proprietary Name <INN>.

However such an endorsement is unlikely to assist in overcoming grounds for rejection which have been raised for other reasons (e.g. under section 41 or section 44 of the Trade Marks Act 1995).

4.3.2 Section 43 grounds for rejection in relation to INN stems

A ground for rejection under section 43 exists where a trade mark to be used in relation to pharmaceuticals or veterinary substances consists of an INN stem, or contains a notified INN stem in a meaningful way, and use of the trade mark in respect of the goods covered by the specification are not restricted to substances indicated by the INN stem.  

A section 43 ground for rejection may be overcome by the applicant agreeing to a condition of registration limiting use of the trade mark to goods containing substances belonging to the relevant INN stem. The endorsement suggested by the Registrar in these circumstances is:

It is a condition of registration that any use in respect of pharmaceuticals will be limited to such goods containing substances belonging to the pharmacological group designated by the International Non-Proprietary Name stem <stem>.

4.3.3 Meaningful INN stems

An examiner will need to consider whether the presence of an INN stem in a word is “meaningful” enough to give rise to a connotation leading to potential deception or confusion under section 43.  

Some INN stems consist of simple two or three letter combinations and their presence in a larger word may not be meaningful and as a result would not lead to deception or confusion. For example, the presence of ‘aj’ in the term ‘Sansajabendorastine’ is not significant enough to warrant a ground for rejection given the length of the name and other competing references such as ‘astine’. By way of contrast the appearance of ‘aj’ in ‘tenaj’ would more clearly give rise to a section 43 ground for rejection. Other examples of INN stems included in a meaningful way include:

  • -flurane

EXIFLURANE

  • -mycin

TRIPTOMYCIN

  • estr

PREMIUMESTREMAX

In addition, a stem may not be included meaningfully in a trade mark where its presence is clearly overwhelmed by the meaning of the trade mark as a whole. Examples of INN stems not included in a meaningful way include:

  • -ast

PAIN GOES FAST

  • -quin(e)

HAPPY EQUINE

  • som-

SOMALIAN ALOE

  • sal

SMILING SALLY

In Boehringer Ingelheim International GmbH [2012] ATMO 117 (TM ZELCIVOL and INN-stem –OL), Hearing Officer Thompson discusses some general principles, in addition to those above, regarding INN-stem considerations. At 23 he states:

Where most of the following factors are present:

  1. a. The suffix is in common use other than in its INN-stem connotation, as evidenced by both the:

  2. i. state of the Register; and

  3. ii. the marketplace

  4. b. The INN-stem is two or three letters long,

  5. c. There are other or alternative obvious suffixes present in the trade mark. For example, …, the trade mark KASAL might be viewed as having two alternative suffixes –SAL or –AL (both of which are INN-stems),

  6. d. The INN-stem is non-specific - that is, in the context of the trade mark under consideration the INN-stem would not be generally apprehended as indicating only a particular kind of pharmaceutical because the ‘prefix’ does not conform with the usual formulation specific to the INN-stem under consideration,​​​​​​​

the section 43 ground should not be raised as it is unlikely that the use of the INN-stem would deceive or cause confusion.

When deciding whether the presence of an INN stem in a trade mark is “meaningful” enough to give rise to a connotation leading to potential deception or confusion examiners need to consider all of the above (some of which may be obvious or determinable through research, whilst others may not be apparent during the course of initial examination).

4.4 Names of Persons

If a trade mark contains or consists of a name of a person (or group of people) which is well known in relation to the specified goods or services, the provisions of section 43 may be triggered. Such names could consist of the given name, surname, combination of both or known nickname for the well known person (or group of persons).

For example, if an application is filed for the name of a well known person, and the goods or services are clearly likely to be perceived by consumers as connected with or having the endorsement of the well known person, or that he or she is involved in the production of the goods or the supply of the services, the provisions of section 43 may be triggered. Connections of this kind would exist between the name of a well known swimmer and swimming costumes or the name of a well known cricketer and cricket coaching services.

If the trade mark application is submitted by the well known person or it is  clear from other available information that the applicant has permission from the well known person or their representative to file for the well known  persons name, a section 43 ground for rejection is not required.

However, if the examiner is not satisfied that the relevant relationship exists between the applicant and the well known person referred to, a ground for rejection may be appropriate.

If the trade mark consists of or contains a name of a well known person and the application is in respect of goods and/or services outside the area that the person is well known for, then careful consideration of several factors in combination, informed by research, is required.

Firstly, the examiner will have to consider whether consumers aware of a particular well known name are likely to see the name as referring to the well known person, rather than someone else with the same name. The more common the name, whether it is a given name, surname or combination of both, the less likely it is that consumers will make this assumption, as many well known people have names shared by many other people. Conversely, a highly distinctive and unusual name shared by very few people is more likely to be assumed by consumers to refer to the well known person.

Secondly, the particular field in which the name is well known is relevant. In today’s market, consumers expect certain persons with a high profile or celebrity status to endorse a wide range of goods and services, often completely unrelated to the areas in which they are well known and/or have expertise.

Thirdly, consideration is required of the extent of connection between the field the name is well known for, and the goods and/or services specified. The closer the link between the goods or services and the particular field in which the name is well known, the more likely it is that consumers are going to assume a connection to the well known name exists.

While all the above factors are relevant, the question that the examiner must ultimately decide is whether the trade mark conveys a connotation that the goods or services have a connection with or approval of the well known person(s) to such a level that confusion or deception is likely to occur within the relevant sector of the public.

An applicant may overcome this type of section 43 ground for rejection by providing the well known person’s written permission to use their name as a trade mark. Where permission is provided this should be made clear by way of an endorsement. For example:

<name of well known person> has consented to the use of his/her name as a trade mark.

4.5 Images of Persons

The considerations applying to the names of well known persons also apply to images of those persons. Images can include photographs, portraits, cartoon caricatures and other stylised representations.

An applicant may overcome this type of section 43 ground for rejection by providing the well known person’s written permission to use their image as a trade mark. Where permission is provided this should be made clear by way of an endorsement. For example:

The representation in the trade mark is that of <name of well known person> who has consented to the use of their image as a trade mark.

A section 43 ground for rejection should not be raised merely because a trade mark contains the image of a person. The section 43 ground for rejection should only be raised if the examiner considers that the connotation discussed above is likely to arise.

4.6 Deceased Persons

Generally, a section 43 ground for rejection will not apply in respect of long deceased historical figures, even if they were well known for the same field as the specified goods and services are in. For example, the use of the name “W G Grace” (a famous cricketer whose career spanned from around 1860 to 1900) on cricket bats would be more likely to be regarded as a focus on a bygone era rather than a suggestion that there is any endorsement of, or input by, that person or their descendants.

However, if research indicates that the commercialisation of a deceased well known person’s name or image is being controlled by their estate or another authorised entity then (unless that entity is the applicant) raising a section 43 ground for rejection may be warranted, using the considerations as for living people above. This is because of the likely connotation that the estate endorses or otherwise has a connection with the specified goods and/or services.  The more well known the person, and the more recently they died (especially if from the mid 20th century onwards), the greater the likelihood that such a situation exists. Often in such cases, research will reveal if an estate or entity is controlling the use of the well known name. However, if no such control is apparent, objections should not be routinely taken.

4.7 Phonewords and Phone Numbers

Phonewords and SMS words include 1300, 1800, 13 and 197 phone numbers that are presented  alphabetically using the letters of a telephone or mobile key pad (e.g. 1300 GROCER, 1800 RABBIT and 13 BAGS).

The licence to use a phoneword or SMS words is for the actual numerals forming the operational part of the phone number (not for the alphabetical segment). For example the licence to use the phoneword 13 BAGS lies in the number 13 2247.

A section 43 ground for rejection will apply if the applicant for a trade mark containing material likely to be viewed as a phoneword, or the numbers representing a phoneword, is not also the owner (or authorised user) of that phoneword.  For example, the following trade marks consisting of or containing material likely to be viewed as a phoneword would attract a  section 43 ground for rejection:

  • 1800 RABBIT
  • 1800 722248
  • 1300 RABBIT
  • 1800 RABBITS 4 U
  • 1300 RABBITS 4 U
  • 1800 RABBITS ARE THE BEST PETS
  • 1300 RABBITS ARE THE BEST PETS
  • 13 BAGS

  • 13 2247

  • 13 BAGS 4 U

The section 43 ground for rejection will be reconsidered if an applicant provides information confirming that they are the owner or authorised user of the phoneword.

Other phone numbers which do not appear to represent a phoneword should not be queried or researched specifically in respect of section 43, unless other information before the examiner gives them particular reason to suspect that the applicant may not be the licensed user of the number.

4.8 Internet Domain Names

Internet domain names are typically a combination of standard address code material and an identifier. Standard address code material (such as "www", "net", "org", "com", "shop" or "au" and punctuation symbols "." or "/") points to directories, sub-directories and servers and is common to many domain names. An identifier may be an individual's name, an existing trade mark, a company name, a product name, a topic or any other combination of letters and numerals and is unique within any given domain name registration system.

The registration of Internet domain names is managed by various registrars, each accredited by either the Internet Corporation for Assigned Names and Numbers (ICANN) or a national country code top-level domain authority. In Australia auDA (.AU Domain Administration Limited) is the policy authority and industry self-regulatory body.

A section 43 ground for rejection will apply if the applicant for a trade mark consisting of, or containing, material likely to be viewed as an Internet domain name is not also the registrant or authorised user of that Internet domain name. Consumers are likely to believe that the applicant is the registrant or authorised user of the Internet domain name connoted within the trade mark, and on this basis be deceived and confused if in fact this is not the case.

A section 43 ground for rejection will be reconsidered if it is established that the applicant is the owner or authorised user of the Internet domain name reference.

4.8.1 Top Level Domain Names

Top level domain (TLD) refers to the last segment of a domain name. TLDs are mainly classified into two categories: generic TLDs (for example .org) and country-code TLDs (for example .au).  A generic TLD may however include any wording following a dot (.SOMETHING).

In the case of a generic TLD, the trade mark application needs to be holistically considered, including the relevant specification, when determining whether the material (.SOMETHING) is likely to connote a generic TLD.

If it is clear that such a connotation exists, the examiner should then consult ICANN's list of generic TLD applications. If the generic TLD referred to in the trade mark appears on ICANN’s list and is not under the status ‘Withdrawn’, ‘Not Approved’ or ‘Will Not Proceed’, then a section 43 ground for rejection should be raised in the first instance if the applicant is not also listed as the registrant of the generic TLD application.

4.8.2 2nd level and Sub Domain Names

2nd level domains commonly include an organisation reference and a TLD. For example: (SOMETHING.COM) where something refers to the organisation and com the TLD.

A subdomain is a subset of a domain name and may refer to a specific section of an organisation’s website. For example: (SHOP.EXAMPLE.ORG) where shop refers to the subdomain (where a user can access an online shop) and example.org the domain name (including the TLD .org).

A section 43 ground for rejection will apply if the applicant for a trade mark, which connotes an Internet domain name (including a 2ND level domain / sub domain), is not the registrant or authorised user of that Internet domain name.

4.9 Radio Call Signs and Frequencies

Radio call signs and frequencies are governed and administered by the Australian Communications and Media Authority (ACMA).  People who want to operate a radio station have to apply to ACMA and are governed by their rules.

In Australia Radio call signs are quite specific, and indicate the state/territory and whether the frequency is AM or FM (two letters for AM, and three for FM).  Also, radio broadcasters who wish to apply for a license with ACMA to operate can choose a call sign, but if they do not then the ACMA provides one - and radio broadcasters don't choose the frequency (according to the ACMA's website this is chosen for the broadcaster by the ACMA).  Every broadcaster/radio station has to use a different radio call sign.

Some examples of radio call signs are 1CBR, 2CA, 4CCR.

A section 43 ground for rejection will apply if the applicant for a trade mark containing a radio call sign or frequency, in class 38 for broadcasting or related services, is not also the licensed owner/operator of a radio station with that radio call sign or frequency.  This is because confusion would be created if the owner of the trade mark did not in fact have the license to operate with that radio call sign or frequency.

The section 43 ground for rejection will be reconsidered if an applicant provides information confirming that they are the licensed owner/operator of the radio call sign or frequency.

Examiners will also need to consider raising a section 41 ground for rejection in relation to any trade mark which could viewed as a radio call sign or frequency that simply consists of that material or with other descriptive or non distinctive elements.

4.10 Descriptions of goods/services

A term within a trade mark describing particular goods/services will not trigger section 43 as long as those goods/services are covered by the specification.  For example:

Trade Mark

Goods / services claimed

PLATYPUS

Meat free snack

Class 29 "Snack foods made from dehydrated vegetables"

The trade mark contains the words “Meat free snacks”. A section 43 ground for rejection is not required as the specification claims snack foods which are made from meat free ingredients. Although this specification may notionally include snack foods which do contain some meat, we cannot be satisfied that there is an immediate danger of consumers being deceived or misled. There is no need for an examiner to request the specification be restricted to meat free snack foods or to require an endorsement restricting the specification of goods when the trade mark is in use.

If, however, there is a connotation present within the trade mark that is directly contradicted by the specification, there is a high likelihood of consumers being deceived or confused. The connotation of the trade mark would mislead consumers into buying something other than what the label suggests is in the package, and so a section 43 ground for rejection would be appropriate. For example:

Trade Mark

Goods / services claimed

PLATYPUS

Meat free snack

Class 29: “Snack foods predominately made of meat”

When considering trade marks that include a clear connotation, the concept that this connotation would be understood as a fanciful or unrealistic description can also be taken into account. See Mount Everest Mineral Water Limited v Himalayan Spring Mineral Water [2010] ATMO 85 (at 15). This concept also considers the likely expectations and level of awareness of the ordinary consumer of the goods/services. Per Scotch Whisky Association v De Witt [2007] FCA 1649 (at 61):

a label indicating bourbon, bourbon whiskey and/or made in the USA clearly connote an origin of a place other than Scotland. Labels indicating ‘Tennessee Whiskey’ again connotes an origin in a place other than Scotland. For a mark to be rejected under s 43 there must be a ‘real tangible danger of deception or confusion’. That exceptionally stupid or careless consumers might be confused does not suffice.

4.11 Geographical references

A trade mark may include statements such as ‘Product of Australia’, ‘Proudly Tasmanian’, ‘Owned in Queensland’, ‘Grown in Griffith’ or ‘Made in Sri Lanka’. A trade mark may also simply include  the name of a town / city / state / country. This type of material can form a connotation within the trade mark concerned, on the basis that it is a reference to the geographical source of goods or the location of a service that consumers can engage.

Trade marks which contain this material should be carefully considered on the basis that the connotation of this type of reference, when applied to goods and / or services claimed, would likely deceive or confuse the relevant consumer. This determination includes assessing whether the scope of the goods and / or services would include areas outside the geographical location and that a consumer would reasonably expect them to originate from the reference in the trade mark.

If a geographical reference is obvious, direct and immediate within the trade mark itself, and has a connotation relevant to the goods and / or services claimed, deception and confusion is likely if the goods and / or services do not have a connection to the geographical reference.

A typical example is where a geographical reference connotes that the goods and / or services claimed are of a certain quality or standard, or exhibit attributes for which the geographical reference is known.

If a geographical reference also has other meanings and / or associations this should be considered in determining that there is a real likelihood of deception or confusion in the minds of the relevant consumer. This was considered in Scotch Whisky Association v De Witt [2007] FCA 1649 when deciding whether GLENN OAKS, when applied to bourbon products that do not originate in Scotland, would be likely to deceive or cause confusion because of the connotation. At 59:

First, for both involved and uninvolved purchasers of bourbon products, the words Glen or Glenn is more likely to be associated with a person’s name than with a place denoting Scottish origin. Most uninvolved scotch whisky consumers, particularly those of pre-mixed drinks, would also think of a person’s name before thinking of a Scottish place.

Examples:

Class 29: Dried herbs

This trade mark contains the words ‘Grown in Australia’. The reasonable expectation of the consumer would be that the herbs to which the trade mark is applied are grown in Australia. The scope of the trade mark, should it be registered, will not be limited to only those herbs grown in Australia. Consequently, if applied to herbs which are not grown in Australia, deception or confusion will occur. A section 43 ground for rejection should be raised with the applicant having the option to either restrict the specification or apply a condition of registration. For example:

Class 29: Dried herbs grown in Australia

OR

It is a condition of registration that the goods specified within the application originate from or are grown in Australia.

Class 35: Bookkeeping services

Whilst a geographical reference is clearly included, and has no other meanings or associations, this reference needs to be considered in the context of both the trade mark and the services claimed. The connotation of ‘grown in Tasmania’, applied to these services, is not obvious and is unlikely to result in a situation where a consumer’s expectation of what this trade mark connotes turns out to be false, resulting in deception and confusion.


Class 31: Beef Cattle

This example includes the Australian geographical reference, Casino. This location has a significant reputation in Australia as a beef production area. This trade mark indicates to relevant consumers that the live cattle originate from, or have a direct connection to this location.

It is likely that this reference would directly influence a consumer’s purchasing decision, on the basis that the goods are of a particular quality or characteristic that cattle from Casino and its surrounding region are known for. Whilst the word 'casino' also has another clearly understood meaning, relating to gambling, in this context this connotation is unlikely. Purchasers of beef cattle will be familiar with cattle breeding regions in Australia. Such purchasers would understand the reference to Casino to be a reference to the town and its surrounding region.

Deception and confusion would be likely if goods badged with this trade mark did not originate from or have a direct association with this location. A section 43 ground for rejection should be raised with the applicant having the option to either restrict the specification or apply a condition of registration. For example:

Class 31: Beef cattle from Casino, NSW

OR

It is a condition of registration that the goods specified within the application are from Casino, NSW.


Class 43: Restaurant services

In this example the reference to Casino is unlikely to be understood as a geographical reference. Its inclusion, as part of a slogan, suggests that that restaurant services claimed are applicable to a Casino venue. The choice of wording ‘best bet’ reinforces this idea. Casino venues typically offer restaurant services which further substantiates this connotation. It is unlikely that consumers would falsely expect that the restaurant services are offered in the township of Casino. The danger of consumers being deceived and confused on this basis is minimal.

4.12 Implied endorsement or licensing

Trade marks that consists of, or include wording and / or imagery that connotes a connection with a well-known reference may also give rise to deception and confusion. The inclusion of such material may result in ordinary consumers being deceived and confused on the basis of incorrectly believing that the trade mark indicates an endorsement or approval from the party or parties that own and have control over the well-known material.

When faced with this type of reference it is important to remember that the connotation must be from the trade mark itself and not from any other external considerations such as a reputation in another trade mark. The particular currency (or relevance) that the reference currently has and the extent to which it is well known are also important considerations. The connection between the goods and / or services that the reference is well-known for and what has been included as part of the specification are also relevant  factors.

This issue is one where evidence will in most cases play an important role in determining the strength of the connotation and for that reason, an objection on this basis is usually more appropriate for consideration during the opposition stage.

See the following decisions for further detail:​​​​​​​

  • Radio Corporation Pty Ltd v Disney [1937] HCA 38; 57 CLR 448 (‘Mickey Mouse’);
  • Amalgamated Television Services Pty Limited v Sylvia Margret Clissold [2000] ATMO 14 (‘Home and Away’);
  • Amalgamated Television Services Pty Limited v Pickard [2000] 48 IPR 133 (‘Summer Bay’);
  • Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (‘Braveheart’);
  • McCorquodale v Masterson [2004] 63 IPR 582 (‘Diana’s legacy & device’);​​​​​​​


4.13 Claims to Indigenous origin

If a trade mark, or some part of the trade mark, contains a reference to Indigenous people and a connotation arises from the mark that would be likely to deceive or confuse consumers within the relevant market, then a ground for rejection under s43 should be raised.

A trade mark may include statements such as ‘Aboriginal designed’, ‘Product of the Ngunnawal people’, or ‘Ngunnawal Art’. This type of material can form a connotation within a trade mark which would lead consumers into being misled into thinking that the goods or services bearing the applicant’s mark come from a source with an Indigenous connection. 


Amended Reasons

Amended Reason Date Amended

4.13 Claims to Indigenous origin - added