IGE clarifies practice regarding prefixes 'san' and 'sana' for pharmaceuticals

The Swiss Federal Institute of Intellectual Property (IGE) has clarified its practice regarding the prefixes 'san' and 'sana', which are commonly used in the pharmaceutical industry.

With regard to 'sana', the IGE held that this prefix is descriptive for health-related goods and services. Therefore, when used for pharmaceuticals, it does not enjoy protection; however, compound signs using the prefix 'sana' in conjunction with other syllables can be registered. Nevertheless, their protection is limited to the part(s) that do not consist of the term 'sana'. Therefore, according to the IGE, there was no likelihood of confusion between the marks SANOFI and SANAPHYT for pharmaceutical products in Class 5 of the Nice Classification (see SANOFI/SANAPHYT, June 27 2012).

With regard to 'san', on the other hand, the IGE held that this prefix was not descriptive and had not been weakened by frequent use (or, at least, this had not been shown so far). Therefore, the prefix 'san' enjoys a normal scope of protection. The IGE thus concluded that there was a likelihood of confusion between the marks SANDOZ and SANKOM for pharmaceutical products in Class 5 (see SANDOZ/SANKOM, June 28 2012).

Arguably, the distinction made between 'san' and 'sana' is rather non-intuitive. Practitioners should be aware of this practice when filing an application and deciding whether to oppose. It is important to note that these decisions are not necessarily final (it is not evident from the IGE's website whether they have been appealed).

The IGE's practice stands in contrast to the case law of the Federal Administrative Court, which considers 'san' to be descriptive for health (insurance) (see decision B-37/2011 of October 6 2011).

Mark Schweizer, Meyerlustenberger Lachenal, Zurich