Case Details
- Citation: [2024] SGIPOS 3
- Court: Intellectual Property Office of Singapore
- Date: 2024-05-13
- Judges: Principal Assistant Registrar Ong Sheng Li, Gabriel
- Plaintiff/Applicant: (1) BioMedical Research Group Inc., (2) Macrophi Inc.
- Defendant/Respondent: N/A (ex parte hearing)
- Legal Areas: Trade marks and trade names – Ex Parte Hearing
- Statutes Referenced: Trade Marks Act, Trade Marks Act 1998
- Cases Cited: [2017] SGIPOS 3, [2019] SGIPOS 11, [2024] SGIPOS 3
- Judgment Length: 18 pages, 4,835 words
Summary
In this ex parte hearing, two Japanese companies, BioMedical Research Group Inc. and Macrophi Inc. (the "Applicants"), sought to register the trademark "IP-PA1" in Class 3 for non-medicated toiletry and bath preparations. The term "IP-PA1" is an abbreviation for "immunopotentiator from Pantoea agglomerans 1", referring to a lipopolysaccharide derived from a specific strain of bacteria that has been found to have beneficial properties. The Intellectual Property Office of Singapore (IPOS) ultimately rejected the trademark application, finding that the term "IP-PA1" was descriptive of the goods and lacked distinctive character under Sections 7(1)(b) and 7(1)(c) of the Trade Marks Act.
What Were the Facts of This Case?
The Applicants, BioMedical Research Group Inc. and Macrophi Inc., filed an application to register the trademark "IP-PA1" in multiple classes, including Class 3 for "non-medicated toiletry preparations; bath preparations, not for medical purposes." The term "IP-PA1" is an abbreviation for "immunopotentiator from Pantoea agglomerans 1", referring to a lipopolysaccharide derived from a specific strain of the Pantoea agglomerans bacteria.
The Applicants claimed that a group of Japanese researchers, including Gen-Ichiro Soma, Chie Kohchi, and Hiroyuki Inagawa (who are linked to Macrophi Inc.), were the first to isolate and extract this beneficial lipopolysaccharide from Pantoea agglomerans 1. They apparently named the substance "IP-PA1" and asserted that it has various potential applications, including promoting hair growth, reducing atopic dermatitis, and suppressing inflammation.
The trade mark examiner initially raised objections to the application in Classes 5, 30, 31, and 32, finding that the term "IP-PA1" was descriptive and lacked distinctive character. In response, the Applicants withdrew the application in those classes and requested that the remaining application in Class 3 be registered. However, the examiner later raised late objections to the Class 3 application as well, maintaining that the term "IP-PA1" was still descriptive of the goods.
What Were the Key Legal Issues?
The key legal issues in this case were whether the trademark "IP-PA1" was: 1. Devoid of any distinctive character under Section 7(1)(b) of the Trade Marks Act, and 2. Consisting exclusively of signs or indications that may serve to designate the kind, quality, or other characteristics of the goods under Section 7(1)(c) of the Trade Marks Act.
The Applicants argued that the term "IP-PA1" was a unique identifier created by the researchers and should be considered a distinctive trademark. The examiners, on the other hand, found that the term had become a known descriptor for the lipopolysaccharide derived from Pantoea agglomerans 1, and that consumers would perceive it as such when used in relation to the Class 3 goods.
How Did the Court Analyse the Issues?
The examiners at IPOS carefully analyzed the evidence and information available to them regarding the term "IP-PA1" and its usage. They noted that based on their own online searches, the term "IP-PA1" refers to the lipopolysaccharide derived from Pantoea agglomerans 1, which has been the subject of various research studies highlighting its potential beneficial properties.
The examiners acknowledged the Applicants' argument that the term was created and named by their affiliated researchers. However, they found that the term was being used in a descriptive manner in the relevant scientific literature, rather than as an indicator of trade origin. The examiners pointed to research articles, including one co-authored by the Applicants' CEO, that discussed the potential use of IP-PA1 as an ingredient in skin care cosmetics and health foods.
Considering this context, the examiners concluded that the average consumer would perceive the term "IP-PA1" as a descriptor of the ingredient present in the Class 3 goods, rather than as a distinctive trademark. They found that the mark was therefore objectionable under both Sections 7(1)(b) and 7(1)(c) of the Trade Marks Act.
What Was the Outcome?
The IPOS examiners ultimately rejected the Applicants' trademark application for "IP-PA1" in Class 3. The Applicants were unable to persuade the examiners to waive the objections, and their remaining options were to either file evidence of acquired distinctiveness or request an ex parte hearing.
The rejection of the trademark application means that the Applicants will not be able to register "IP-PA1" as an exclusive trademark for their non-medicated toiletry and bath preparations. This decision reflects the examiners' view that the term is primarily descriptive of the key ingredient in the goods, rather than serving as a distinctive identifier of the Applicants' products.
Why Does This Case Matter?
This case highlights the importance of distinctiveness in trademark registration, particularly when the proposed mark is closely tied to the nature or characteristics of the goods. The IPOS examiners' analysis demonstrates the careful consideration given to the usage and perception of the term "IP-PA1" in the relevant industry and scientific community.
The decision serves as a reminder to trademark applicants that even if they have created or named a term, it may still be found to lack distinctiveness if it is commonly used in a descriptive manner. Applicants seeking to register such terms must be prepared to provide evidence of acquired distinctiveness through extensive use and consumer recognition.
This case also underscores the role of the trademark examination process in maintaining the integrity of the trademark register and preventing the registration of marks that would unduly restrict competition. By refusing to register "IP-PA1" as a trademark, the examiners have ensured that the term remains available for use by others in the industry to accurately describe their products containing the lipopolysaccharide.
Legislation Referenced
Cases Cited
- [2017] SGIPOS 3
- [2019] SGIPOS 11
- [2024] SGIPOS 3
Source Documents
This article analyses [2024] SGIPOS 3 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.