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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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In the end Class 5 practice can be confusing

Two recent decisions, one before the UK Trade Mark Office, the other before the General Court, show that when it comes to trade mark oppositions in Class 5, anything can happen and probably will

As part of a longstanding worldwide dispute involving the Indian company Ajanta Pharma Limited and the US based multinational pharmaceutical company Pfizer, Inc, the UK Trade Mark Office issued a recent decision in an opposition filed by Pfizer against Ajantaís UK trade mark application for KAMAGRA in Class 5. Taking the same position as OHIM, where the First Board of Appeal rendered a decision in Pfizer's favour (R1845/2012-1), the UK Trade Mark Office confirmed that there was a likelihood of confusion between the marks KAMAGRA and VIAGRA.

Ajanta had applied for the mark KAMAGRA in the UK covering ìpharmaceutical and veterinary preparations and substances in Class 5. Pfizer opposed this UK application based on their earlier CTM registration for VIAGRA covering, amongst other goods, pharmaceutical preparations, in particular preparations for the treatment of erectile dysfunction.

In support of their opposition, Pfizer made the following claims, namely that

  • The marks are highly similar in view of the identical suffix -AGRA and the goods covered are identical or similar (Section 5 (2)(b) of the Trade Marks Act 1994);
  • Ajantaís use of KAMAGRA would take unfair advantage of the earlier mark's reputation and would lead to the blurring and dilution of the distinctiveness of VIAGRA, leading to a reduction in sales (Section 5(3)); and
  • the sign VIAGRA has been extensively used in the UK since September 1998 on pharmaceutical preparations and particularly for the treatment of erectile dysfunction and the use of KAMAGRA would lead to a misrepresentation (Section 5(4)(a)).


Ajanta disputed that there would be a likelihood of confusion between the marks given the large number of third party owned, earlier trade marks in Class 5 containing the identical suffix AGRA on the UK trade mark and CTM registers. They also argued that the parties had entered into an agreement whereby Ajanta was given consent to use the mark KAMAGRA by Pfizer. The UK Trade Mark Officeís Hearing Officer (Ms. Pike) did not share the same view and refused Ajantaís UK application.

In her decision, while Ms Pike found the marks to be similar only to a low degree, she also acknowledged the reputation of the mark VIAGRA in connection with pharmaceutical preparations for the treatment of erectile dysfunction by stating that ìit is common knowledge that VIAGRA has a reputation for treating that condition and I take judicial notice of that factî. With regard to the reputation of the pharmaceutical preparations other than those for the treatment of erectile dysfunction, Ms. Pike further stated that, although the relevant consumers in relation to pharmaceutical trade marks consist of specialised medical practitioners and of the end patients, the mark "has acquired such a reputation that it goes beyond the relevant public as regards the opponent's goods". Therefore, despite, in her view, a low degree of similarity between the goods relied upon in the opposition and the remaining goods claimed by Ajanta, she considered that there would be a link between them.

In addition, the Hearing Officer acknowledged that Ajanta's use of KAMAGRA would take unfair advantage of the reputation of VIAGRA since the evidence brought by Pfizer showed use of KAMAGRA in connection with products for the treatment of erectile dysfunction and this fact could not be a "mere coincidence". Finally, Ajantaís argument that Pfizer had given consent to use the mark KAMAGRA was also rejected since the agreement entered into between the two parties was restricted to India and expressly stated that Pfizer would not be prevented from enforcing their rights in other territories.

Two days after this UK Trade Mark Office decision was issued, the General Court rendered a judgement in a factually similar case (Farmaceutisk Laboratorium Ferring v Tillotts Pharma; T501/12).

Tillotts had applied to register the trade mark OCTASA at OHIM in connection with "preparations and substances for preventing and treating diseases and disorders of the gastro-intestinal tract" in Class 5.

Ferring filed an opposition based on Articles 8 (1)(b) and 8(5) CTMR and relied on a large number of earlier national marks for the trade marks PENTASA and OCTOSIM covering diverse goods in Class 5 including gastro-intestinal pharmaceutical preparations.
The Opposition Division rejected the opposition on the basis that,

  • The common suffix -ASA was descriptive, being an acronym for the pharmaceutical product 5-aminosalicylic acid (also known as mesalazine and 5-ASA);
  • There was a considerable difference between the prefixes of the marks namely OCT- and PENT-.


On this basis, the Opposition Division found that there was no likelihood of confusion between the two marks OCTASA and PENTASA. In addition, while the Opposition Division did not expressly reject the reputation of Ferring's (PENTASA) mark, they did reject the Article 8(5) ground of opposition since they considered that Ferring had not brought sufficient evidence that Tillotts' mark OCTASA would take unfair advantage of, or be detrimental to, the reputation of the earlier mark.

Ferring subsequently filed an appeal against the decision of the Opposition Division. However, the Fourth Board of Appeal dismissed the appeal, again on the basis that there was no likelihood of confusion between the marks OCTASA and PENTASA in view of the descriptive character of the suffix -ASA. The Board of Appeal also dismissed the appeal, insofar as it relied on Tillottsí earlier mark OCTOSIM, considering that the similarity between the marks OCTASA and OCTOSIM was no more than average, the similarity between the goods covered by those marks was weak, the distinctiveness of the earlier mark was no more than average and the relevant consumerís attention was high.

In a further appeal, the General Court held that the Fourth Board of Appeal had erred in finding that there was no likelihood of confusion between the marks OCTASA and PENTASA.

In its decision, the General Court considered that, while it is settled case-law that, in relation to pharmaceutical trade marks, the relevant consumers consist of both medical practitioners and end-patients and, therefore, the level of attention is higher than average, the Board of Appeal had failed to establish that the descriptive character of the suffix -ASA would be understood by both sets of relevant consumers. The evidence before the Court had shown that the active ingredient mentioned on the packaging of the PENTASA product was ìmesalazineî. However, the other synonyms used in connection with the same active ingredient, namely 5-aminosalicylic and 5-ASA, were only mentioned in medical and scientific publications addressed to medical professionals. According to the Court, although end-patients were deemed to have a higher level of attention than average, it had not been established that medical practitioners would use the names 5-aminosalicylic, 5-ASA or "asa" with their patients when prescribing them such (mesalazine) medicines. Therefore, this category of relevant consumer (namely end-patients) would not be able to immediately interpret, without further thought, the suffix -ASA as a reference to the active ingredient "mesalazine", 5-aminosalicylic or 5-ASA.

The General Court further held that, because the descriptive character of the suffix -ASA in connection with the active ingredient 'mesalazine' had not been established in OCTASA and PENTASA, the Board of Appeal had erred in considering that there was no likelihood of confusion between the marks, considering the visual, phonetic and conceptual similarities between the two marks (OCTASA and PENTASA).

It is to be noted that the General Court based its analysis on just one earlier national, Benelux registration for PENTASA and did not further comment on the merits of either the other earlier national rights for PENTASA, the earlier registrations for OCTOSIM or any of the arguments or evidence put forward for the Article 8(5) ground of opposition.

Comment
Despite the apparent consistency in the outcome of two very similar cases, these decisions highlight the difference still residing in the approach taken by the UK Trade Mark Office and OHIM in the assessment of the likelihood of confusion.

The decision of the UK Trade Mark Office mirrored that of the First Board of Appeal in the corresponding CTM case (R 1845/2012-1). However, while this UK decision shows a degree of harmonisation that is often missing from EU trade mark decisions, it also highlights a nuance of UK practice in the general assessment of the reputation of an earlier mark, and subsequently of unfair advantage, which appears to be far less conservative, albeit more pragmatic, than the position often taken by OHIM. Ajantaís use of KAMAGRA, in connection with products to treat erectile dysfunction, was indeed taken into account in the assessment of the UK Trade Mark Office, despite the broad coverage of their UK trade mark application in Class 5. As a result, the Hearing Officer was willing to accept that the use of KAMAGRA would take unfair advantage of the reputation of VIAGRA. An interesting question would be whether the UK Trade Mark Office would have rejected Ajantaís application (for KAMAGRA) if the reputation of the earlier mark had not been established; very likely not.

Down in Alicante, the Opposition Division took a different approach in a very similar case by applying a stricter assessment of the application of Article 8(5) CTMR and of the notion of unfair advantage. This point of law, to the regret of the writer, was not examined by either the Board of Appeal or the General Court, both of which focused solely on the assessment of the similarity between the signs and the level of knowledge of relevant consumers. On the latter point, the decision of the General Court in the OCTASA  v PENTASA case reminds us that, despite the higher level of attention of end-patients due to the nature of the (Class 5) goods, such consumers (end-patients) are no medical experts and this needs to be taken into account when assessing the evidence and arguments based on the names of, and abbreviations of, pharmaceutical products.

THE SCOPE OF PROTECTION OF BLACK AND WHITE MARKS IS NO RAINBOW
(It's not black and white either!)