PHARMA TRADEMARKS
public at least as much as the elements ‘rette’ and ‘rono’ because of its length and position at the beginning of the marks.
The Femibion v Femivia case In its judgment of July 16, 2014, the General Court held that the marks ‘Femibion’ (figurative) and ‘Femivia’ were too similar. Both marks sought protection or were registered for pharma preparations for treating diseases affecting women. Te prefix ‘Fem’, which could clearly be perceived as being an abbreviation deriving from the Latin word ‘femina’ (woman), would have a weak distinctive character for the goods covered by the marks based on its descriptive character. However, that fact doesn’t mean that ‘Fem’ is
not taken into account when comparing the signs at issue. Even if the average consumer displayed a high level of attentiveness, he or she only rarely has the chance to make a direct comparison between the different marks, and instead must place his or her trust in the imperfect picture of them that he or she has kept in mind. Hence, the marks would be confusingly similar.
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All the judgments discussed above are
somewhat surprising given that the General Court regularly starts from the assumption that the level of attentiveness of the relevant public including end consumers would be “heightened” or “higher than average”. Nevertheless, pharma trademarks containing
clearly descriptive elements do not seem to be affected in their scope of protection. Rather, such marks appear to keep the same importance as the distinctive element. In this author’s view, the General Court’s
core finding can be found in the Biocef v Biocert judgment. As
far as applicants are barred
from obtaining a monopoly on the respective descriptive element (like ‘bio’, ‘nico’ or ‘fem’), and given that the existence of a likelihood of confusion leads solely to the protection of a certain combination of elements without actually protecting the descriptive element of that combination, the latter element will keep the same importance as the distinctive element in that combination. So, it seems that the scope of protection of pharma trademarks containing a descriptive
element is wider than one would have thought. It remains to be seen whether these findings will, one day, be confirmed by the Court of Justice of the European Union.
Alexander Thünken is a partner at Uexküll & Stolberg in Germany. He a German
is attorney-at-law and certified
specialist in industrial property law. His practice focuses on all aspects of trademark law. He can be contacted at:
thuenken@uex.de
World Intellectual Property Review Annual 2015
83
ALEXYZ3D /
SHUTTERSTOCK.COM
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