No likelihood of confusion between invented pharmaceutical marks

Ireland
In Pinewood Laboratories Limited v Novartis AG (February 26 2010), the acting controller has dismissed an opposition against the registration of the trademark LEXAM for goods in Class 5 of the Nice Classification.
 
Pinewood Laboratories Limited applied to register the trademark LEXAM in respect of pharmaceutical preparations and substances in Class 5. On advertisement, it was opposed by Novartis AG, relying on its prior mark PLEXTAM for pharmaceutical preparations.

The acting controller found as follows:
  • The fact that marks are invented words may be taken into account in assessing the conceptual qualities of the marks and, therefore, cannot be allowed to bestow upon the words a higher or lower level of visual similarity than that of two dictionary words of like construct and content.
  • A low to medium level of visual similarity existed between PLEXTAM and LEXAM.
  • PLEXTAM and LEXAM each contain two syllables. They both end in 'am' and share five letters. All the letters of the later mark are found in the earlier mark, in the same order.
  • The average consumer would instinctively notice the dissimilarity between the marks - particularly the fact that they have different first letters.
  • Aurally, the letters 'P' and 'T' in PLEXTAM, being the lead letters in each of the two syllables, provided an emphasis that distinguished the overall sound of the two marks from one another. Hence, there was a medium degree of aural similarity.
  • It is well established that the opening syllable of a word mark is generally the most important in terms of visual and oral identity. The opening syllables of PLEXTAM and LEXAM were different.
  • As regards conceptual significance, the marks consisted of invented words with no direct meaning or definition, which were not misspellings of common words. Hence, they were neither similar nor different, and did not conjure up any conceptual notion or imagery. Therefore, the two marks had a low level of overall similarity.
  • The goods covered by Pinewood's mark were identical, or similar, to those covered by the earlier registration. Therefore, a lower level of similarity between the marks could be deemed sufficient to declare that a likelihood of confusion existed. However, the actual level of similarity between the marks fell short of what was required in order to conclude that such a likelihood existed. The mark PLEXTAM had a high degree of inherent distinctiveness. However, as it had not been used in Ireland, no additional distinctiveness acquired through use or promotion could be ascribed to it.
  • The overall impression created by each of the marks was different.
  • The average consumer was the public generally. The acting controller was not persuaded that the average person who knew of a pharmaceutical product called Plextam would be caused to recollect that product and name if he or she were to encounter pharmaceuticals offered for sale under the name Lexam. 
Accordingly, the opposition was dismissed. 

Patricia McGovern, DFMG Solicitors, Dublin

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