PHARMA TRADEMARKS
Assessing the likelihood of confusion
The EU’s General Court has given equal weight to descriptive and distinctive elements in disputes over pharma trademarks. Alexander Thünken of Uexküll & Stolberg reports.
from International Nonproprietary Names (INNs). Such trademarks are considered to be particularly attractive as they immediately inform about the purpose and indication of the respective pharma product. However, the downside of such trademarks
T
is obvious: they may sometimes be hard to register. Moreover, they traditionally tend to have a reduced scope of protection, meaning that oſt en infringement can be established only in cases where the confl icting signs are more or less identical. T e recent case law of the EU’s General Court, however, seems to point towards a diff erent—perhaps opposite—direction.
The Biocef v Biocert case In its judgment of December 10, 2014, the General Court held that the marks ‘Biocef’ and ‘Biocert’ are confusingly similar in relation to pharma preparations. Novartis had fi led an opposition against the mark ‘Biocert’ on the basis of its earlier Austrian word mark ‘Biocef ’.
rademarks for pharmaceutical preparations are oſt en created from descriptive
Aſt er the opposition was dismissed by the Opposition Division at
the Offi ce for terms, and sometimes
Harmonization in the Internal Market, and the Fourth Board of Appeal confi rmed this dismissal (particularly because ‘Bio’ is descriptive for pharmaceuticals and due to
the allegedly
heightened level of attention of the relevant public) the General Court annulled the decision and found in favour of Novartis. T e court argued that the visual and aural
similarities between the marks at issue would arise not only from the presence of the element ‘Bio’ in the marks, but also from other factors, including the almost identical length of the signs and the fact that they share the fi rst fi ve letters. Given the average degree of distinctiveness
of the earlier mark, the court found that there is a likelihood of confusion, even if the public is considered to have a heightened level of attention. According to the court, the weak distinctive character of one element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public. In essence, the court could not deduce that only the distinctive element of a mark that comprises
82 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
The Nicorette v Nicorono case On June 24, 2013, the court took a similar approach. It found that the marks ‘Nicorette’ and ‘Nicorono’, which were both seeking protection or registered for products and chewing gum related to stopping smoking, would be confusingly similar. T e Second Board of Appeal had held that due to the weak distinctive character of the element ‘Nico’—a reference to nicotine—at the beginning of the marks, the attention of the relevant public would be drawn to the diff ering ends of the marks, so there would be no likelihood of confusion. T e General Court, however, did not share
this view and concluded that despite ‘Nico’ highly evoking a characteristic of the goods in question, meaning it could be considered to have a weak distinctive character, ‘Nico’ was likely to attract the attention of the relevant
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both a descriptive and a distinctive element is decisive when assessing likelihood of confusion. T e decision is in line with other relatively
recent judgments previously issued by the General Court.
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