MYCOSTEN held to be confusingly similar to MYCOSTATIN

Ireland

In Pierre Fabre Dermatologie v ER Squibb & Sons LLC (October 26 2007), the acting controller has upheld the opposition filed by ER Squibb & Sons LLC against the application to register the trademark MYCOSTEN on the grounds that there was a likelihood of confusion with Squibb's earlier registered trademark MYCOSTATIN.

Pierre Fabre Dermatologie applied to register the trademark MYCOSTEN for pharmaceutical products, dermatological products, dermo-cosmetics products for skin and hair hygiene and care (Application 220204). The application was opposed by Squibb based on its registered trademark MYCOSTATIN. The opposition went to hearing.

First, the acting controller confirmed that whether there is a likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. While each of the factors must be assessed individually and objectively, there is some interdependence between the relevant factors and their respective effects must be weighed against each other. Therefore, all the facts of the case as they affect each of the relevant factors individually must be examined before turning to the matter of their combined effect.

The acting controller held that, visually and aurally, there was a high degree of similarity between MYCOSTEN and MYCOSTATIN. However, the controller had no evidence before him as to the pronunciation of the marks. Therefore, he used his own judgement and concluded that, notwithstanding aural similarities between the trademarks arising from shared common elements, these similarities were offset to some extent by the likely pronunciation of each by the average person.

He also concluded that it would be incorrect to assume a conceptual distinction between the marks in the mind of that portion of the relevant consumer pool consisting of medical professionals based on the inclusion of 'statin' as an element of Squibb's mark.

However, the acting controller concluded that there were several points of close similarity between the respective goods and that these should be regarded as highly similar for the purpose of the overall assessment of the likelihood of confusion. As regards the distinctiveness of MYCOSTATIN, the acting controller held that it should be assumed that the mark had acquired a certain additional distinctiveness by virtue of the use that had been made of it.

Further, the acting controller considered extensively the nature of the goods and consumer behaviour. He held that the consumers of the goods included:

  • the medical profession, which prescribes or dispenses the goods (and to whom the trademark used in relation to different products are relevant); and

  • the patients, who ultimately use the goods.

Hence, the likelihood of confusion must be assessed from the perspective of each category of consumer separately. The acting controller accepted that a higher level of care and attention may be expected to be applied by all consumers - whether or not they are medically qualified - to the selection of pharmaceuticals than would be the case in respect of many other categories of goods.

For registration to be refused, the acting controller held that there must be a real likelihood of confusion arising in the actual conditions of everyday trade in the goods concerned; such a likelihood may not be inferred from the possibility of confusion in exceptional circumstances. He referred to the decision of the European Court of Justice in Alcon Inc v Office of Harmonization for the Internal Market (C-412/05 P). He concluded that there were sufficient similarities between the respective trademarks and the products on which they were used or proposed to be used to suggest a likelihood of confusion on the part of the average person. Even though that likelihood of confusion was not to be expected of the medical professionals who are involved in the supply of the relevant goods, there was nevertheless a real likelihood that Pierre Fabre's product would be sold in place of Squibb's.

Therefore, the acting controller upheld the opposition and refused registration.

Patricia McGovern, DFMG Solicitors, Dublin

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