In an opposition decision that was published in December 2009, the IP Office of Singapore (IPOS) disallowed the registration of the mark VINELBINE in the country.

Pierre Fabre Medicament, the owner of the mark NAVELBINE opposed the application for the mark VINELBINE by Dabur Pharma Ltd. The application was opposed on a number of grounds, the main one being that the mark VINELBINE was devoid of distinctive character in relation to the goods they are applied to, namely pharmaceutical products containing the active ingredient known by its International Non-proprietary Name (“INN”) or generic name of vinorelbine.

That the mark VINELBINE was confusingly similar to their mark NAVELBINE was one of the ancillary grounds put forth by the Opponent.

The Opponent is the first and sole company in the world, up until around 2005, to manufacture products containing the ingredient vinorelbine. Sales of the Opponent’s products under its mark started as early as 1989 in France and then expanded to other countries from 1991 onwards. It is therefore evident why the Opponent was extremely keen to protect its mark since it had acquired substantial goodwill, having been active in the international market for almost two decades.

On the absolute ground raised, the Singaporean Registry opined that differences between the mark VINELBINE and VINORELBINE were immaterial; on the basis that both words are essentially the same apart from the middle letters and these differences are wholly insignificant in the eye of a consumer as they are likely to be overlooked.

The Registry concluded that both VINELBINE and VINORELBINE are visually and aurally similar and that VINELBINE is a trivial variation of VINORELBINE. Following this observation, the mark VINELBINE is indeed devoid of distinctiveness in relation to goods which contain the active ingredient vinorelbine. Based on their conclusion, the Registry decided in favour of the Opponent and the mark VINELBINE was denied registration in relation to goods such as “medicinal and pharmaceutical preparations”.

The Registry also considered the issue of public policy and opined that there is policy rationale for protecting the term VINORELBINE. In the pharmaceutical world, medical professionals, scientists and pharmacists need to easily identify chemical substances/active ingredients by their generic names/INN. If registration was permitted for the use of the term VINELBINE, which closely resembles vinorelbine, there would be restriction in the freedom to use the term, which is contrary to public policy.

As for the relative ground that the marks were confusingly similar, the Registry concluded that the marks NAVELBINE and VINELBINE did not satisfy this criteria, and they were held to be different aurally and visually. Since the marks were not confusingly similar, a real likelihood of confusion on the part of the public could not exist. Without evidence of misrepresentation, the Registry found that there could not have been any misrepresentation on the part of the Applicant.

This case illustrates the importance of choosing marks which are not descriptive, generic or directly suggestive of the goods they apply to. The owners of VINELBINE lost their rights to their mark in Singapore purely because their mark was deemed to be generic.