ASAMAX and ALMAX marks to coexist

The Irish Patent Office has allowed the registration of the mark ASAMAX by Yamanouchi Europe BV in respect of pharmaceutical preparations and medicines for human use in Class 5 of the Nice Classification.

Following advertisement, the mark was opposed by Almirall-Prodesfarma relying on its trademark ALMAX which is registered as a Community trademark in Class 5 in respect of a special pharmaceutical product used for neutralizing gastric hyperacidity.

Among other things, the hearing officer rejected an objection under Section 10(3) of the Trademarks Act (unfair advantage/detriment) on the basis that the only evidence filed in support of Almirall-Prodesfarma's claim that its earlier mark enjoys a reputation in the European Union was a decision of the Spanish Trademarks Office. In the absence of any information as to the basis on which that decision was reached, the hearing officer was not prepared to accept it as a statement of fact for the purpose of the proceedings before him and therefore concluded that Almirall-Prodesfarma had not established that its mark enjoyed the requisite reputation on which to base the objection under Section 10(3). An objection under Section 10(4) (use liable to be prevented by virtue of rule of law protecting an unregistered trademark) was also rejected on the basis that Almirall-Prodesfarma had filed no evidence to suggest that its mark had been used or is known in Ireland and it could not therefore claim that it could prevent the use of Yamanouchi's mark through an action for passing off.

The hearing officer, however, addressed in detail the objection under Section 10(2)(b) of the act (is there a likelihood of confusion on the part of the public?). He reiterated that the question of whether a likelihood of confusion exists as between two trademarks must be appreciated globally, taking into account all factors relevant to the circumstances of the case. On a visual comparison he concluded that the words were similar. Aurally, he reasoned that the marks were somewhat similar. On an overall phonetic comparison he concluded that Yamanouchi's mark consisted of two syllables only, while Almirall-Prodesfarma's had three. Conceptually, he held that the 'MAX' element of each mark was likely to evoke the concept of 'maximum' but, since neither word in its entirety has any specific meaning, he thought the marks were neither similar nor dissimilar from a conceptual aspect. He concluded that the marks were more than moderately similar but not highly similar. He did, however, conclude that the respective goods must be treated as identical.

The hearing officer noted that as Almirall-Prodesfarma's mark is an invented word, it should be regarded as inherently distinctive. However, because of lack of evidence he was not prepared to ascribe to it any additional distinctiveness that it may have acquired through use. The hearing officer had no evidence before him as to whether the products sold under either mark were available on prescription only or openly available over the counter or through supermarkets. He thought it would be wrong to factor an element of professional involvement in the normal purchasing scenario. Rather, he assumed that the goods in question would be purchased directly by the end consumer without the assistance or intervention of a doctor or pharmacist. This assumption led to a higher risk of confusion than would otherwise be the case if a doctor or pharmacist may be expected to exercise particular care in the dispensing of medicines.

He came to the conclusion that, not withstanding the admitted similarities between the respective trademarks, there was not a likelihood of confusion on the part of the public such as would warrant refusal of the application for registration. Even allowing for imperfect recollection, he was of the view that the marks were not so close in terms of their appearance or pronunciation as to suggest that they were likely to be confused by the average person exercising the care that may be expected of someone choosing a pharmaceutical product.

Accordingly, the opposition was dismissed.

Patricia McGovern, P McGovern & Co Solicitors, Dublin