watchful eye on pharmaceutical related
trade mark disputes decided by the EU
IPO may be interested in a recent
decision issued by the EUIPO's Fourth
Board of Appeal (Board) in Pentasa v
Xenasa handed down early this year. In
this notable decision the EUIPO held that
a likelihood of confusion between two
word marks covering Class 5 goods
cannot be ruled out despite the high level
of attention which the public at large and
health professionals will have in the
context of goods of a medical nature. The
fact that health professionals may
understand an element of the marks in
question as a reference to an active
ingredient was regarded as irrelevant by
the Board, where the general public
would not perceive this reference.
Tillotts Pharma AG (Tillotts) to register
as an EUTM the mark XENASA for
pharmaceutical and dietetic substances
"for the diagnosis, prevention and/or
treatment of gastrointestinal disorders
and conditions", following a restriction at
the appeal stage of the originally broader
specification in class 5. Ferring B.V.
(Ferring) opposed the application,
claiming a likelihood of confusion with a
prior EUTM for the mark PENTASA with
protection for pharmaceutical products
broadly in class 5. The prior EUTM was
not subject to a proof of use request, but
during the course of the opposition
Ferring provided evidence supporting a
claim of enhanced distinctiveness of
PENTASA for intestinal anti-inflammatory
products.
the opposition, finding that, even assuming
enhanced distinctiveness of the earlier
mark PENTASA, the attentiveness of the
there would be no likelihood of
confusion due to the overall differences
between the marks, despite the goods in
question being found identical.
PENTASA and XENASA are visually and
aurally highly similar. While the common
ending ASA would be understood by the
professional public as alluding to the
active ingredient mesalazine, it had no
meaning for the end consumer.
Travatan, the Board confirmed that, while
the Class 5 goods concerned require a
doctor's prescription prior to their sale
to end-users in pharmacies, the relevant
public was composed of both medical
professionals and end-users. As it had
not been established that end users
would understand the letters ASA as
referring to an active ingredient, this
element could however not be treated as
lacking distinctiveness. Therefore the
mark PENTASA was held to be of
average inherent distinctiveness, and
aurally and visually similar to XANTASA
to an average degree, with neither mark
having any conceptual meaning.
figures provided by Ferring in support of
their opposition convinced the Board of
the enhanced distinctiveness of the
PENTASA mark for both the professional
public and the public at large in respect
of a pharmaceutical product prescribed
for the treatment of diseases of the
gastro-intestinal tract. In this context the
Board stressed that the earlier mark was
afforded a broadened scope of protection
due to its extensive use and market
success. In view of this, the identity and
high similarity of the goods and the
average level of visual and aural similarity
between the marks, the Board concluded
that there was a likelihood of confusion.
view of these authors - quite striking
differences between the prefixes
PENT- and XEN-, the Board's decision
may come as somewhat of a surprise,
bearing in mind the established principle
of a higher level of attention in trade
mark cases concerning medical and
pharmaceutical goods and services.
Further, the Board's reasoning emphasises
the importance of the perception of end
consumers, who represent a significant
part of the relevant consumers, when
considering the likelihood of confusion
between pharmaceutical trade marks. The
Board's decision is therefore a useful
reminder of the relevant principles that
must be taken into account when
assessing a likelihood of confusion in the
context of products of a medical and/or
pharmaceutical nature.
comfort by perusing the very
informative summary of EUTM case law
provided by Verena von Bomhard in the
last addition of Law Lore & Practice
which helpfully illustrated that the higher
level of attention for pharmaceutical
products continues to be an influencing
factor in determining consumer
confusion. This is echoed in the EUIPO's
updated trade mark manual of 23 March
2016 provides the following guidance: "...
insofar as pharmaceutical preparations
are concerned, the relevant public's
degree of attention is relatively high,
whether or not issued on prescription ...
In particular, medical professionals have a
high degree of attentiveness when
prescribing medicines. With regard to
non-professionals, they also show a
higher degree of attention, regardless of
whether the pharmaceuticals are sold
without prescription, as these goods
affect their state of health."