'Citramon' held to be customary for painkillers
Legal updates: case law analysis and intelligence
The Vilnius District Court has recognized that the term 'citramon' was a customary name for painkillers (Case 2-640-342/2010, February 12 2010).
The case arose from a long-running dispute between two major pharmaceutical companies,SIA Stirolbiofarm Baltikum and AB Sanitas, over the protection of trademarks containing the element ‘citramon’ in the Republic of Lithuania. Following a ruling of the Supreme Court, the case was returned to the Vilnius District Court for re-examination.
Stirolbiofarm had asked the court to:
- declare that the term 'citramon' lacks distinctive character for goods in Class 5 of the Nice Classification because it has been used by different companies as the name of a painkiller over a long period of time;
- recognize that the term 'citramon' is a customary name for painkillers composed of a combination of paracetamol, aspirin and caffeine; and
- cancel Sanitas' registration for the trademark NEOCITRAMONAS on the grounds that the mark was devoid of any distinctive character and consisted exclusively of signs designating the characteristics of the goods - in particular, Stirolbiofarm argued that the term 'neo' (Greek for 'new') and 'citramon' indicated only the type of the goods ('new citramon').
First, the court stated that the historic use of the term ‘citramon’ should be taken into account to determine whether the term could be protected as a trademark.
The court took the following facts into account:
- The term 'citramon' was invented in the middle of the 20th century in the Soviet Union to designate painkillers composed of paracetamol, aspirin and caffeine. Sanitas did not present any evidence demonstrating that itself or a related company had invented the term.
- The term 'citramon' has been used intensively and extensively over a long period of time by different companies.
- There were many registrations for trademarks containing the term 'citramon' in the name of different companies, but no registration for the term ‘citramon’ alone.
- 'Citramon' was - and still is - used as a customary name for painkillers in literature.
- 'Citramon' is recognized as a customary name for painkillers by pharmacists.
- In a public survey, 93 to 97% of the Lithuanian respondents indicated that citramon was a painkiller.
In light of the above, the court considered that the term ‘citramon’ was customary for painkillers composed of paracetamol, aspirin and caffeine. Therefore, it was devoid of distinctive character in respect of goods in Class 5 and could not perform the essential functions of a trademark.
However, the court also took into account:
- the high sales figures of NEOCITRAMONAS-branded products; and
- the fact that, according to the public survey, NEOCITRAMONAS was the best known of all the trademarks containing the term ‘citramon’ in Lithuania.
Therefore, the court refused to invalidate the registration for the trademark NEOCITRAMONAS on the grounds that it had acquired distinctive character.
Evelina Norkaitiene, Law Firm AAA Baltic Service Company, Vilnius
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10