Confusion with generic drug name is basis for cancellation

In Sanofi-Sythélabo v Egis Gyogyszergyar RT (Case 2-45-231/2004), the District Court of Vilnius has ordered the cancellation of the defendant's LODIGREL mark on the grounds that it was confusingly similar to an international non-proprietary name (INN). This is the first time that the district court has used such grounds to cancel a trademark registration.

Following the Lithuanian Patent Office's decision to dismiss Sanofi-Sythélabo's action seeking cancellation of Egis Gyogyszergyar RT's (EGR) registration for LODIGREL, it appealed to the District Court of Vilnius. In its appeal, Sanofi-Sythélabo argued, among other things, that EGR's LODIGREL mark was confusingly similar to the INN Clopidogrel, which is the generic name for a type of drug. As a result, the LODIGREL registration was in breach of Part B of Article 6quinquies of the Paris Convention for the Protection of Industrial Property, which prohibits, among other things, registration of marks that (i) infringe rights acquired by third parties in the country where protection is claimed, or (ii) are contrary to morality or public order.

In response, EGR stated that the guidelines on the use of INNs for pharmaceutical products are only recommendations and do not have the force of law. Thus, the LODIGREL registration was not in breach of the Paris Convention.

The district court upheld Sanofi-Sythélabo's action and cancelled the LODIGREL mark. It first noted that as Sanofi-Sythélabo manufactures a pharmaceutical product that bears the Clopidogrel INN, it has a right to bring a claim against other manufacturers to prevent them from using trademarks derived from that INN. The court then stated that when examined from the average Lithuanian consumer's perspective, LODIGREL was confusingly similar to Clopidogrel. This fact, added to the potential danger to consumers that such confusion could cause, meant that the LODIGREL mark had to be cancelled. The district court was also concerned about maintaining the integrity of the INN system.

EGR has appealed to the Lithuanian Court of Appeals.

Vytautas Kalmatavicius, AAA Legal Services, Vilnius