A recent German “bio” trade mark dispute demonstrates the dangers of an international biotech industry over relying on common terminology within trade marks.
With over 2,200 marks containing “bio” in the Australian Trade Marks Register (TM Register), this case highlights potential issues for companies in the Australian biotech sector.
This case involved two "BIO" marks, BIONSEN and BIOPHEN, both registered in class 3 in relation to similar goods.
In considering the dispute over these marks the German Federal Patent Court focussed keenly on consumer perception, observing that:
1. Consumers tend to pay closer attention to the beginnings and endings of trade marks and pay less attention to the letters in the middle; and
2. Descriptive elements of trade marks are generally less relevant for a finding of confusion than non-descriptive and fanciful elements.
In relation to these two observations, the Court gave greatest weight to the first principle, observing that the beginning (“BIO”) and the end (“EN”) of each mark was identical and would likely lead to consumer confusion. As a result the Court ruled that the later mark, Biophen, was to be removed from registration.
In this particular case the Court did however comment that the “BIO” in “BIONSEN” was not descriptive. The Court took the view that Germans would not pronounce the mark as “BIO-NSEN”, rather; they would pronounce it as “BION-SEN” or “BI-ON-SEN” and not emphasize the “BIO” element.
“Bio” & “Pharma” in the Australian Context
The Australian TM Register is inundated with “bio” marks, with 2,289 pending or registered marks and counting! Further, a very high proportion of these (2044, nearly 90%) contain “bio” as a prefix syllable.
Whilst a few of these marks may be perceived in the same way as “Bi-on-sen”, meaning that the “bio” is not perceived, it appears that the majority are specifically designed to highlight the “bio” element as an emphasis on biotech.
As a potential alternative for some, it should be noted that “pharma” doesn’t appear to be a much better choice, with 678 pending and registered “pharma” marks in Australia.
With so many of these marks on the TM Register it appears that there is a real risk of consumer confusion and a trade mark dispute arising between companies with “bio” or “pharma” marks.
Whilst all companies should strive to create non-descriptive, unique and memorable trade marks; biotech and pharmaceutical companies in particular need to ensure they do not over rely on industry and scientific terms within their trade marks.
For example, if you specialise in skin, hair, genetics or even generics you will need to stretch the imagination far further than company or product names like Bio Skin, Bio Hair, Bio Genetics or Pharma Generics as these likely just won’t cut it!
For those who can read German or comprehend Google Translate™, the Court’s ruling is available here.
19 August 2013