The double test for pharmaceutical trademarks

 

 

 

The « European MEdicines Agency », « EMEA »,(for the Community) – and the « French Health Products Safety Agency « AFSSAPS » (for France) – ascertain that, in the application for trade authorization, proposed pharmaceutical trademarks are not confusingly similar to other existing trademarks and cannot generate confusion as to the quality or properties of the pharmaceuticals and thus create a public health threat.

The OHIM (for the Community) verifies the validity of trademarks from a legal point of view and the case law has given us a recent (and surprising) example of this specific examination.

Solutions Biomed Inc. has filed an application to register PERACILLIN as a community trademark inter alia for « pharmaceutical preparations » in class 5. At first, the OHIM did not consider this application to be eligible for registration on the ground of Article 7 1. (g) of the CTMR because if the mark was used on goods other than PIPERACILLIN (which corresponds to an « INN » – meant for an International Non proprietary Name for pharmaceutical substances) or goods which do not contain it, consumers would be disappointed as to the nature of the goods. The Board of Appeal cancelled this decision on September 15, 2006 and held that :

– the relevant public, which is constituted of professionals and average consumers with a high level of attention given to the particular nature of the concerned goods, is aware that the suffix « Cillin » is commonly used for antibiotics and

– there is a clear difference between the prefixes « Pipera » and « Pera » of the words to compare.

The Board of Appeal concluded that this trademark application was not confusingly similar to the said « INN » (as defined above) and that the consumers would not be disappointed even if the PERACILLIN products did not contain PIPERACILLIN.

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