• IN THE UK OFFICE

    Comparison of Pharmaceutical Trade Marks

    One of the practices followed by generic pharmaceutical companies, when choosing a trade mark for their generic products, is to take a portion of the trade mark of the originator’s product, especially the suffix, whilst ensuring that the mark as a whole can be distinguished from the originator’s mark. The idea behind this practice is that the generic trade mark brings the originator’s mark to the minds of prescribing medical practitioners without leading to confusion as to the origin of the generic product. Two recent UK oppositions suggest that generic houses and indeed the wider pharmaceutical industry should exercise care when following this practice in the future.

    In the first case, (Celltech v Centocor), the mark at issue was Humicade for, amongst other goods, “pharmaceutical preparations for the treatment of Crohn’s disease and rheumatoid arthritis; available only on prescription”. This application was opposed by Centocor on the basis of their earlier CTM registration for Remicade covering inter alia the identical goods. The opponent had sold Remicade for the treatment of severe cases of Crohn’s disease for about six months prior to the UK filing date for Humicade.

    • In my opinion there is little likelihood of direct confusion between the marks given the overall differences between them. However, I must also consider the opponent’s proposition regarding common origin. …the applicant’s evidence…states that the Hu- prefix was adopted to signify that the applicant’s product had a greater proportion of human protein than that of the opponent’s product. I should be slow to find that the message that the applicant has set out to convey to its prospective customers (medical professionals) will not be recognised by them.

    • it is my opinion that the relevant consumer will see “Hu-“ as a semi- descriptive prefix signifying that the applicant’s goods are made from human proteins. The remainder of the applicant’s mark is the same as the middle and end of the opponent’s mark. (The opponent’s)…failure to explain the adoption of the “-micade” suffix is also significant. I must also consider the evidence that there are no other products in the market with either a “-cade” or a “-micade” suffix for the goods at issue.

    • …there is a tangible likelihood that the relevant consumer will believe that Humicade products originate from the opponent, are further goods within the opponent’s range or are produced by an undertaking that is economically linked to the opponent.

     

    In the second case (Omega Farma v H. Lundbeck), the UK application was for the trade mark Oropram in respect of “medicine and medicinal products intended for human therapy”. It was opposed on the basis of an earlier CTM registration for Seropram covering “medical preparations”.

    The opposition was rejected by the Hearing Officer because he believed that the two marks could be distinguished one from the other. The opponent appealed to the Appointed Person (Professor Annand), who reversed the decision. The Appointed Person reasoned as follows:

    • In the applicant’s own admission the prefix of Oropram suggests oral delivery. That, coupled with the degree of similarity in the marks, the identity of the goods and the high distinctiveness of Seropram, leads me to conclude that the average consumer is likely to consider that “medicine and medicinal products intended for human therapy” offered under the mark Oropram originate from the opponents or an undertaking economically linked to the opponents in the sense that they are different products in the same range.

     

    Comment

    In a related, class 5 OHIM appeal, the Appeal Board decided that the CTM mark, Tempovate, was confusingly similar to the prior marks Emovate and Eumovate. The Appeal Board took into account the facts that

    • Medicinal products were often administered over the counter without prescription,

    • Some consumers tended to resort to self-prescription, and

    • Professionals in the medicinal area were often overworked and tended to write prescriptions with poor handwriting.

     

    Whilst little consistency is shown by the UK and CTM authorities when comparing class 5 marks having a common suffix, the two UK cases mentioned above, together with the OHIM (Tempovate) appeal, suggest that later entrants to a particular pharmaceutical market should review the market position very carefully, in particular the nature of the trade marks already used in that market, before committing themselves to a mark that includes a suffix that is identical with the suffix of an established product.