'Citramon' is not customary for painkillers, says court

In SIA Stirolbiofarm Baltikum v AB Sanitas (Case 2A-147/2009, March 31 2009), theCourt of Appeal of the Republic of Lithuania has dismissed SIA Stirolbiofarm Baltikum's appeal against a decision of the lower court and held that the mark NEOCITRAMONAS for painkillers was valid.
Stirolbiofarm had asked the Court of Appeal 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;
  • cancel AB Sanitas's registration for the trademark NEOCITRAMONAS on the grounds that the mark is devoid of any distinctive character and consists exclusively of signs designating the characteristics of the goods - in particular, Stirolbiofarm argued that the terms 'neo' (Greek for 'new') and 'citramon' indicated only the type of the goods ('new citramon'); and
  • overturn the decision of the State Patent Bureau in which the latter had found that the trademark CITRAMON-FORTE STIROL for Class 5 goods was invalid on the grounds that it was confusingly similar to the earlier registered trademark NEOCITRAMONAS for identical goods.
First, the Court of Appeal stated that the term 'citramon' is an invented name for a pharmaceutical composition (paracetamol, aspirin and caffeine) aimed at relieving pain. According to the court, the fact that consumers, doctors, pharmacists and the mass media associated the term 'citramon' with painkillers in general was insufficient to conclude that the term had become customary in everyday language. The court pointed out that the term 'citramon' had not been officially recognized as customary. Moreover, the court found that Stirolbiofarm had failed to prove that 'citramon' had become customary in everyday language.
Second, the Court of Appeal held that the trademark NEOCITRAMONAS was capable of distinguishing the goods of one company from those of another and could thus fulfil the main function of a trademark. In particular, the court stated that the prefix 'neo' was not descriptive, as this term was not widely used in Lithuania. The court also took into consideration the results of a public survey submitted by Sanitas which showed that the NEOCITRAMONAS mark was widely recognized by Lithuanian consumers. This demonstrated that the mark was distinctive and did not consist exclusively of signs designating the characteristics of the goods.
Finally, the court held that Stirolbiofarm was not entitled to appeal the decision of the State Patent Bureau as assignee of the trademark CITRAMON-FORTE STIROL. The court pointed out that the application for the registration of the assignment agreement in the Trademarks Register had been refused because the application was filed after the decision to invalidate the trademark CITRAMON-FORTE STIROL was issued. Although the period to appeal that decision had not expired, the court concluded that the assignment was not valid.
The decision of the Court of Appeal may be appealed to the Supreme Court.
Evelina Serelyte, Law Firm AAA Baltic Service Company, Vilnius

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