Federal Administrative Court considers scope of protection of marks containing INN stems

The Federal Administrative Court has found that there was a likelihood of confusion between the trademarks GADOVIST and GADOGITA (B-5871/2011, March 4 2013).

GADOVIST is the trademark used by Bayer Pharma for a radiocontrast agent. Agfa Healthcare Imaging Agents GmbH wished to use the mark GADOGITA for radiocontrast agents, and applied for trademark protection in Switzerland. Bayer opposed the application and prevailed.

'Gado-' is a "common stem" according to a World Health Organisation document entitled "The use of common stems in the selection of International Non-proprietary Names (INN) for pharmaceutical substances 2011 (WHO/EDM/QSM/2003.2). According to the paper, "these stems [...] are for use when selecting new international non-proprietary names [...]. It would be appreciated if trademarks were not derived from INNs and if INN stems were not used in trademarks".

The Federal Administrative Court noted that Swiss legislation does not specifically prevent INNs, let alone the - very numerous - "common stems", from being registered as trademarks. When a common stem is combined with other characters or elements, it can be registered as a trademark. Whether the scope of protection of a mark containing an INN or common stem is limited with regard to the use of the same INN or stem in another trademark is to be decided on a case-by-case basis.

As a rule, it must be shown that the "common stem" is in fact understood in a descriptive manner by the relevant public. Here, many radiocontrast agents with the active ingredient 'gadolinium' are sold under trademarks that do not contain the element 'gado-', and it had not been established that 'gado-' was understood descriptively. Comparing the two marks as a whole, the court found that they were so similar as to create a likelihood of confusion.

This decision is remarkable because it is apparently the first time that the Federal Administrative Court has reversed a decision of the Intellectual Property Office dismissing an opposition. Usually, it is the other way around - the Administrative Court grants trademarks a very limited scope of protection, often finding that there is no likelihood of confusion.

Mark Schweizer, Meyerlustenberger Lachenal, Zurich