2.7 International Non-proprietary names (INN)

In the 1950s the World Health Organisation (WHO) developed a programme for identifying each pharmaceutical substance by a unique, universally available generic name to be known as an International Non-Proprietary Name (INN).

The WHO advises New Zealand and other member states of recommended INN’s. Notification is accompanied by a request that the name be recognised as the INN for the particular substance, and that member states take all steps necessary to prevent the acquisition of proprietary rights in the name, including prohibiting the registration of the name as a trade mark.

A trade mark that is the same as, or confusingly similar to, an INN in respect of pharmaceutical substances or similar goods is likely to make consumers believe that the goods are, or contain, the pharmaceutical substance identified by the INN. Similarly, a trade mark that is the same as or confusingly similar to an INN, in respect of services related to pharmaceutical substances, is likely to make consumers believe that the services relate to the pharmaceutical substance identified by the INN. Consumers are likely to be deceived or confused if this were not the case.

An examiner should raise a concern under section 17(1)(a) of the Act where:

• The mark is the same as, or confusingly similar to, an INN; and
• The trade mark application is in respect of pharmaceutical substances, similar goods, and/or services related to pharmaceutical substances; and
• The trade mark specification is not limited to (as appropriate):
  • the pharmaceutical substance identified by the INN;
  • goods that contain the pharmaceutical substance identified by the INN; and/or
  • services related to the pharmaceutical substance identified by the INN.

To overcome an examiner’s concern under this heading, the applicant may limit the goods or services to accord with the INN. However, as an INN serves to distinguish a particular pharmaceutical substance from other pharmaceutical substances, it is incapable of distinguishing trade origin. Should the applicant agree to limit the specification in this way, any registrability objection raised under section 18 of the Act that the mark lacks distinctive character will still remain outstanding.