No confusion between LANTON and ZOTON

In Wycth (sic) Holdings Corporation v Rapha Laboratories Ltd (Case 4355/04), the Jerusalem District Court has dismissed the claimant's motion for an interim injunction restraining the defendant's use of LANTON for pharmaceutical products. The court held that the mark was not confusingly similar to the plaintiff's ZOTON mark.

Wyeth Holdings Corporation, a multinational pharmaceutical manufacturer, owns a ZOTON mark for a pharmaceutical product. It brought a claim of infringement against Rapha Laboratories' use of the mark LANTON for a similar product and requested an injunction restraining this use.

The Jerusalem District Court first cited the Supreme Court decision in Taam Teva (1998) Tivoli Ltd v Ambrosia Superb (Case 5454/02), in which the court stated that despite the fact that the Trademark Ordinance (New Version) 1972 does not explicitly state in the definition for infringement that similar marks must be likely to confuse in order to infringe, this criterion is implicit and must be satisfied (for a discussion of the case, see Confusion cleared up by Supreme Court in MEGA-GLUFLEX Case).

The district court considered the appearance of the LANTON and ZOTON marks and held that any similarity between them would not lead to confusion. It stated that since the first letters of the trademarks were different, they would not appear next to each other in catalogues. The court also noted that the colours of the marks differed, with one in white and the other in yellow. It analyzed the sound of both marks and held that although both marks were two-syllable words ending in the suffix 'ton', the prefixes 'zo' and 'lan' were very different.

It next examined the type of goods covered by the mark and the likely purchasing group. The court observed that both marks applied to an indigestion drug sold by prescription only. It held that confusion was unlikely as (i) the two parties' drugs would not be purchased directly by consumers over the counter, and (ii) the appearance of the drugs and their product packaging were very different.

The court also analyzed whether Rapha Laboratories had used the mark LANTON in bad faith. It stated that evidence of bad faith does not necessarily lead to a finding of trademark infringement but added that proving a mark has been used in bad faith, with the intention to confuse the public, could assist in establishing confusion. The court noted that LANTON was not quietly put onto the market. On the contrary, Rapha Laboratories carried out a publicity campaign that advertised the product as a competing generic drug to Wyeth's ZOTON-marked drug. In the court's view, such a campaign negated the assertion that Rapha Laboratories intended to confuse the public. A clear expression of competition will defeat a claim that there has been the intention to deceive or confuse the public with regards to a new product.

Accordingly, the court refused to issue the requested injunction.

Neil Wilkof and Anat Paz, Herzog Fox & Neeman, Tel-Aviv