SINGAPORE: IPOS Examiner Rejects Registration of Scientific Abbreviation

The Intellectual Property Office of Singapore (IPSO) has refused to register a scientific abbreviation as a trademark even though the applicant was the first to discover the substance.

In the matter of a trademark application by BioMedical Research Group Inc. & Anor. ([2024] SGIPOS 3), BioMedical Research Group Inc. and Macrophi Inc. sought to register the mark  in Classes 3, 5, 30, 31, and 32 for “non-medicated toiletry preparations; bath preparations, not for medical purposes.” The term “IP-PA1” is an abbreviation of the words “immunopotentiator from Pantoea agglomerans 1.”

The word “immunopotentiator” is a portmanteau of the words “immune” and “potentiate,” while “Pantoea agglomerans” is a type of bacteria and “1” being the specific strain of this bacterium found in wheat and various plants. Individuals linked to one of the applicants were apparently the first to discover and name the substance IP-PA1.

An objection was raised on the basis that is an abbreviation of a lipopolysaccharide, hence devoid of distinctive character and descriptive of the goods being claimed. In response, the applicants deleted all classes but Class 3 from the application.

However, the examiner raised a further objection to Class 3 on the same grounds. This was maintained by a second examiner following a request for reconsideration. The second examiner conducted a new search subsequent to the issuance of the first office action and noted a sizeable amount of interest among researchers in the scientific community on the potential benefits and applications of IP-PA1. They would perceive the mark as a descriptive term and not as an indicator of trade origin. Unable to convince the examiner to waive the objections, the applicant requested an ex parte hearing.

The adjudicator upheld the decisions of the examiners and refused the registration of the mark  for lack of distinctiveness and descriptiveness, drawing a parallel with an earlier case of Abbott Laboratories v. Société des Produits Nestlé S.A. ([2019] SGIPOS 11), where an application to register the mark H-MO for infant formula and nutritional supplements was deemed, on the evidence, descriptive and nondistinctive.

After considering the evidence, the adjudicator took the view that for the same reasons, the mark was also devoid of distinctive character, and he refused registration.

He said one could argue persuasively that the mark has since become generic based on the evidence and would therefore be unregistrable, and that the applicants were attempting to monopolize an accepted abbreviation.

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