In the case of In the matter of a trademark application by Biomedical Research Group Inc. & Anor [2024] SGIPOS 3, the Intellectual Property Office of Singapore (IPOS) refused trademark registration of the scientific acronym “IP-PA1” (Proposed Trademark), finding it to be descriptive and not distinctive.

Brief Facts of the Case

This case involves an immunopotentiator (something that enhances a body’s immune response) from a strain of bacteria called Pantoea agglomerans 1 developed by BioMedical Research Group Inc. and Macrophi Inc. (collectively, the Applicants), hence the abbreviation and mark “IP–PA1”.  Researchers linked to the Applicants were the first to isolate a specific lipopolysaccharide from Pantoea agglomerans 1 and name it “IP-PA1”.  Research suggests that IP–PA1 may have both medical and non-medical applications such as promoting hair growth, reducing atopic dermatitis and suppressing inflammation.  To prevent others from using “IP-PA1”, Biodemical and Macrophi sought its trademark registration under several classes covering non-medicated toiletry and bath products, nutritional supplements, certain food and beverage items and animal foodstuffs.

The trademark examiners objected to the application on various grounds, including that the Proposed Trademark is not distinctive, is not an indicator of trade origin and is purely descriptive and generic, and therefore cannot be registered as a trademark under sections 7(1)(b) and 7(1)(c) of the Trade Marks Act 1998 (TM Act).  In particular, the examiners found that the Proposed Trademark is already being used to describe a key ingredient in non-medicated toiletry and bath products.
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To convince IPOS to register the Proposed Trademark, the Applicants argued that (a) the Proposed Trademark has no meaning in the English language and is a unique combination which they created specifically for their goods, (b) all uses of the Proposed Trademark are attributable to them and (c) the Proposed Trademark does not describe non-medicated toiletry and bath products.

Key Findings of IPOS

The IPOS ultimately refused the registration under sections 7(1)(b)and 7(1)(c) of the TM Act because the Proposed Trademark is not distinctive and descriptive for the following reasons:

• While the Applicants were the initial users of the term “IP-PA1”, the term was eventually used by other authors and entities not related to the Applicants in their research to describe the “immunopotentiator from Pantoea agglomerans 1.”
• It was not shown that the Applicants ever commercially exploited the term “IP-PA1” or used the term as a trademark.
• The Proposed Trademark is descriptive of the goods’ characteristics, specifically where IP-PA1 is used as an ingredient of non-medicated toiletry and bath products.  In fact, IPOS was able to find a product produced by an entity unrelated to the Applicants which was marketed as having IP-PA1 as a key ingredient.
• In determining whether the Proposed Trademark is descriptive, IPOS not only looked at whether end-consumers are familiar with the term “IP-PA1”, but also considered the familiarity of the term among manufacturers and other people involved in products containing IP-PA1.

IPOS also added that the Proposed Trademark may have become generic because of its widespread use in other literature and other products, and was therefore also not eligible for registration under section 7(1)(d) of the TM Act.

Conclusion

Trademark is a system that grants monopoly in the use of certain words, images and devices to distinguish a product in the market.  In that regard, marks for registration must be able to distinguish the applicant’s product from its competitors’ products.  Even self-coined scientific terms may not necessarily be eligible for trademark registration where such terms lose their distinctiveness.  Applicants should therefore be mindful to exploit and register their marks early to reduce the likelihood of the marks becoming descriptive and generic.

For More Information

OrionW regularly advises clients on intellectual property matters.  For more information about Singapore intellectual property law, or if you have questions about this article, please contact us at info@orionw.com.

Disclaimer: This article is for general information only and does not constitute legal advice.

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