Pharmaceutical trade mark confusion

As with any industry sector, trade marks are important tools for life sciences businesses to establish an appealing brand for their products. However, when developing a trade mark, attention needs to be given to those names already being used in the marketplace or registered as trade marks, in particular, to avoid similarities that cause a likelihood of confusion in the minds of the consumer between the product and those of competitors. Furthermore, when Community Trade Marks (CTMs) are used, the point of view of consumers from all European Union member states must be taken into account. This was demonstrated in the recent case discussed below concerning FEMIVIA and FEMBION.

Endoceutics, Inc., filed a CTM application in 2010 for the word FEMIVIA covering "Pharmaceutical preparations for the prevention and treatment of medical conditions related to the menopause" in class 5. The application was opposed by Merck KGaA on the basis of two prior rights:

• CTM registration for the word FEMIBION covering "Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants" in class 5; and
• an International registration designating the EU covering "Pharmaceutical preparations; dietetic preparations on the basis of vitamins, minerals, trace elements, oils and fats, either apart or combinations thereof" in class 5.

The Office for Harmonization in the Internal Market's (OHIM) decision was based on the stylised prior right only.

open bookIt dismissed the opposition, finding no likelihood of confusion due to the only similarity in issue being the shared prefix "femi" which has weak distinctive character for the goods covered.

Merck appealed and the Fourth Board of Appeal upheld the appeal and refused the CTM application. It found a likelihood of confusion amongst Spanish speakers on the basis of (a) identity of the goods; (b) average visual similarity; and (c) a high degree of phonetic similarity between the application and the stylised mark. The Board of Appeal did not consider that the prefix "femi" would be seen as descriptive.

Endoceutics appealed to the General Court. It claimed:

• the prefix "femi" is descriptive for class 5 goods so the correct comparison is "bion" vs "via"; and
• the Board of Appeal was wrong to base its assessment of likelihood of confusion on Spanish speakers and not English speakers.

The General Court rejected the appeal and upheld the decision of the Fourth Board of Appeal. It stated:

1. Spanish speakers will understand the "femi" prefix to be short for "femenino", Spanish for "feminine", and that the goods in question are intended for women. Although average consumers usually perceive marks as a whole and do not analyse the component parts, they will nevertheless break a word down into elements that mean something or resemble words known to them. The "femi" prefix is therefore of weak distinctive character. Nevertheless, that does not mean it cannot be considered when comparing the signs. The signs must therefore be compared as a whole:

• visually the signs possessed an average degree of similarity – they shared the same first 4 and 6th letters and the figurative element is secondary and disregarded;
• phonetically, both signs had the same number of syllables and in Spanish, 'v' is pronounced like 'b' so a high degree of similarity existed; and
• conceptually, neither sign possessed any meaning in Spanish (despite the prefix "femi" being recognised as having some meaning). Conceptual similarity was therefore neutral.

pill bottle labelAlthough there is a high level of attention paid to class 5 goods, consumers rarely have the chance to compare signs side-by-side. The earlier figurative mark therefore had a normal level of distinctive character.

As a result, there was a likelihood of confusion on the part of Spanish consumers and the appeal was refused.

2. The principle that a CTM may be refused on absolute grounds that exist in any part of the EU applies, by analogy, to relative grounds of refusal. The Board of Appeal was therefore not incorrect in basing its likelihood of confusion analysis on Spanish speakers only.

This case demonstrates the importance of assessing the likelihood of confusion between two signs from the point of view of consumers from all European Union Member States. Furthermore, it is important to note that a likelihood of confusion may not necessarily be offset by a common constituent element being seen as descriptive in one particular EU language.

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