Descriptiveness of Foreign Words Clarified
Recent Assistant Commissioner’s decision A Menarini Industrie Farmeutiche Riunite SRL clarified the assessment of descriptiveness in relation to foreign words...
Menarini applied to register KETUM in relation to an anti-inflammatory drug used to ease joint and muscle pain. The examiner objected to registration on the grounds of descriptiveness and non-distinctiveness after finding evidence that “ketum” is a recognised name for the Mitragyna speciosa species of plant, being a plant commonly used for medicinal properties including pain relief. In further correspondence the applicant stated that Ketum is a Malay term; that their product has no connection with the Mitragyna speciosa species of plant and that KETUM is an invented word when used in relation to anti-inflammatory drugs. They also offered to amend the specification to specifically state that it does not contain compounds or derivatives of the Mitragyna Speciosa plant. IPONZ refused the amendment on the basis that it would not remove the possibility of consumer confusion given its descriptive capacity in relation to similar pain relieving properties.
The Assistant Commissioner noted that IPONZ’s Practice Guidelines state the registrability of a mark comprising a foreign word is influenced by whether the foreign language is generally known to the relevant class of persons in New Zealand. The Assistant Commissioner held that the evidence did not establish that Ketum is a name used for the Mitragyna speciosa species of plant in New Zealand and that the meaning of the word would not be readily apparent to the average person in New Zealand.
While acknowledging that overseas internet use can be relevant to distinctiveness in New Zealand, the Assistant Commissioner gave little weight to such evidence as it was generally in a language that is foreign to many New Zealanders and involved use in countries where English is not an official language. It was also not clear on the evidence whether New Zealanders could purchase Ketum on the foreign websites and if so whether delivery could be made to New Zealand. The Assistant Commissioner also considered that pharmacists and medical professionals would be more likely to refer to the substance with the scientific name Mitragyna speciosa, which is how it is referred to in the Medical Regulations 1984. The Assistant Commissioner further held that other traders would be unlikely to want to use Ketum in good faith for products that compete with those of the applicant.
Consequently the Assistant Commissioner allowed the mark to proceed to registration and did not require any disclaimer to compounds or derivatives of the Mitragyna Speciosa plant to be entered on the specification.