Mistakes to Avoid When Registering a Pharmaceutical Trade Mark

George Raptis

• 29 July 2021
• 29 July 2021
• 6 min read

There is a lot to think about when registering a trade mark, from the different requirements in a trade mark application to avoiding different grounds for having your application rejected. To help simplify the process, this article outlines:

• the ins and outs of trade mark registration; and
• the biggest mistakes you should avoid when registering a pharmaceutical trade mark.

Trade Marks and Classes 

Many people are unaware that you register trade marks in connection to a specific good or service. This means that a trade mark is only capable of protecting the goods and services that IP Australia has approved in your application.

For example, suppose you manufacture a type of medicine and other products like bandages to support muscles, but only have a trade mark registered for the medicine. In that case, your trade mark cannot protect the other products when they are marketed and sold.

For this reason, you must be sure that the goods you specify in your application translate to the goods you intend to protect. If you forget to include a certain good in your application once you have submitted it to IP Australia, it is unlikely that you can amend your application. Therefore, you will likely have to submit a whole new application at an additional cost. To avoid this, you should familiarise yourself with the relevant classes particular to pharmaceutical goods.

Class 5 Goods

Class 5 is a broad category containing a range of pharmaceutical goods. According to IP Australia’s Trade Mark Classification Search, goods in class 5 include: 

• pharmaceutical and veterinary preparations;
• sanitary preparations for medical purposes;  
• dietetic food and substances for medical or veterinary use; 
• dietary supplements; 
• plasters and materials for dressings;
• dental wax;
• disinfectants; 
• preparations for destroying vermin; and
• fungicides and herbicides. 

The list of goods in class 5 is extensive. However, there is a summary of some key examples of these goods in the table below. 

Consider Other Classes 

Depending on your business, there are likely to be more classes that apply to your application. To avoid missing out on any other relevant classes, you could conduct a comprehensive search of the Classification Search. Another way you can identify other classes that may be relevant to your business is by using the Trade Mark Assist Tool. IP Australia created this program to help guide trade mark applicants through the application process. Additionally, it is a useful tool that you can use to identify other classes that may be relevant to your business. 

Grounds for Rejection 

There are multiple grounds upon which IP Australia can reject your trade mark application. However, two grounds that are most relevant to pharmaceutical trade marks arise where an International Nonproprietary Name (INN) is used in your application. Put simply, an INN is a generic name for a substance or active ingredient in a drug like ‘paracetamol.’ 

Since an INN is a generic term that describes a family of substances, it is likely that others would also want to use the term when applying for a trade mark. Hence, a trade mark that contains an INN cannot distinguish the applicant’s goods from those of another person. This means IP Australia can reject the application under section 41 of the Trade Marks Act. 

In a similar vein, since an INN has certain specific connotations, a trade mark that contains an INN is likely to deceive or cause consumer confusion. Consequently, IP Australia can reject the application under section 43 of the Trade Marks Act.

This same rule also applies to using a notified INN stem. Some examples of an INN stem include the suffix ‘-astine’ for antihistaminics and the suffix ‘-drine’ for sympathomimetics. You can find a more comprehensive list of notified INN and INN stems at the World Health Organization’s website here.

Trade Mark Registration

To apply for a registered trade mark, you must file an application via IP Australia’s online services. You can either apply using a standard form application or a TM Headstart application. Using a standard form, you must provide amongst other things:

• a description of the goods that your trade mark will protect;
• certification that you have conducted a trade mark check to ensure that someone else has not already registered your intended trade mark; and
• the class of services that your trade mark will apply to, i.e. class 5 on the Trade Mark Classification Search, which includes pharmaceutical products. 

You will still need to complete all the formal requirements of a standard application when using a TM Headstart application. However, a TM Headstart application provides you with an additional service where a trade mark expert undertakes a pre-assessment of your application before you formally submit it for IP Australia’s review. This way, you can identify any potential errors in your application, such as the use of an INN or an INN stem, and make appropriate amendments. 

Key Takeaways 

When applying for a pharmaceutical goods trade mark, it is important that you avoid applying for generic words that refer to certain substances as IP Australia will unlikely accept your application. These generic terms, such as ‘paracetamol’, are referred to as International Nonproprietary Names and can be found on the World Health Organization’s website here. If you need help with registering a pharmaceutical trade mark, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page. 

Frequently Asked Questions