In more detail

On 13 May 2024, IPOS released the grounds of decision for the case In the matter of a trade mark application by BioMedical Research Group Inc. & Anor. [2024] SGIPOS 3. The case concerned the practically significant issue of trade mark registrability for abbreviations of scientific terms.

The facts

Two Japanese companies, BioMedical Research Group Inc. and Macrophi Inc. ("Applicants"), sought to register the mark "IP-PA1" (Trade Mark No. 40202112183R) in Class 3 ("Application Mark"), for "non-medicated toiletry preparations; bath preparations, not for medical purposes".

The term IP-PA1 is an abbreviation of "immunopotentiator from Pantoea agglomerans 1". The word "immunopotentiator" is a portmanteau of the words "immune" and "potentiate", and thus refers to something that enhances a body's immune response, while Pantoea agglomerans is a type of bacteria. The number "1" here refers to a specific strain of this bacterium (labelled "IG1" or "1"), which may be found in wheat and other plants.

Application history

Through three rounds of examination reports, the examiner continued to maintain objections against the registration for non-distinctiveness and descriptiveness. In particular, the examiner raised that:

• The application was non-distinctive, merely conveying that the goods claimed contain IP-PA1.
• There appeared to be sizeable interest amongst researchers on the applications of IP-PA1, who would perceive IP-PA1 as a descriptive term and not as an indicator of trade origin.
• It was common for traders of Class 3 goods to highlight the key active ingredient(s) contained in their products, so the Application Mark would be perceived by consumers as merely a descriptor of the ingredient present.

As the Applicants were unable to persuade the examiner to waive the objections, they requested for an ex parte hearing before IPOS for the Class 3 application.

Holdings

The Registrar refused registration under both section 7(1)(b) (indistinctiveness) and 7(1)(c) (descriptiveness) of the Act. In relation to descriptiveness, the Registrar noted the following and accordingly refused registration:

• An objection on this ground can be in relation to any characteristic whatsoever of goods or services, irrespective of how significant the characteristic may be commercially. It is sufficient that the signs or indications in question could be used to designate a characteristic of the goods or services.
• It is irrelevant whether the general public may not know what IP-PA1 means unless they are told. It is not an issue that knowledge of IP-PA1 is confined to technical persons, as honest traders selling products containing the ingredient would have a vested interest in informing consumers of what it means and its efficacies. They should not fear infringement for using the term IP-PA1.
• This is similar to a previous case concerning an opposition against the application to register the word mark "H-MO" for infant formula (among other goods). The sign was found to be descriptive and non-distinctive.

Key takeaways

Even if the Applicants were the first to extract and exploit IP-PA1, it would not necessarily follow that they would be granted trade mark protection over it.

Ultimately, trade marks are just one method of protecting intellectual property. As the Registrar stated, "any intellectual property protection must necessarily lie outside of the Trade Marks Register". The Applicants could potentially have sought protection through another type of intellectual property, such as a patent for the process for extracting IP-PA1. The Applicants may also have had better success if they had sought trade mark protection at an earlier stage, before the term became widely descriptively used.

It was also detrimental to the Applicants' case that they had not commercially exploited IP-PA1, or used the term as a trade mark. This prevented them from asserting that then mark had acquired distinctiveness as a result of use over time. This also reinforced the Registrar's view that the word IP-PA1 would not be perceived as a source identifier of the Applicants by the relevant public.

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For further information and to discuss what this might mean for you, or for assistance with submissions to IPOS, please get in touch with your usual Baker McKenzie contact.

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