No likelihood of confusion between PRADAXA and IPRAXA for pharmaceuticals

The Copenhagen Maritime and Commercial Court has issued its decision in Boehringer Ingelheim Pharma GmbH & Co KG v The Patent and Trademark Board of Appeal (Case V-121-08, November 4 2009).
Boehringer Ingelheim Pharma GmbH & Co KG owns the Community trademark PRADAXA for goods in Class 5 of the Nice Classification (pharmaceutical products). The application was made in 2003 and the trademark was registered in 2005.
In June 2006 the World Intellectual Property Organization notified the Danish Patent and Trademark Office that Norton Healthcare Ltd, which owns International Registration 885476, had designated Denmark for registration of the trademark IPRAXA in Classes 5 and 10, and that the registration of this trademark had been published.
Boehringer objected to this designation, stating that the trademark IPRAXA was confusingly similar to PRADAXA. The Patent and Trademark Office rejected the objection, reasoning that:
  • the beginnings of the marks were different;
  • their compositions were different;
  • their pronunciations were different; and
  • the marks had only one syllable in common.
The Patent and Trademark Board of Appeal affirmed the decision.
Boehringer filed suit against the board of appeal to have this decision reversed, but the Maritime and Commercial Court confirmed the decision to register IPRAXA.
The court made the following remarks regarding pharmaceutical trademarks:
"About the marks, which are both registered in Class 5, it is remarked that according to the information available, they cover drugs which aim at the prevention or cure of different diseases, namely thrombosis and respiratory diseases, and which are consumed in different ways, namely as a pill and by inhalation.
Concerning the issue of the relevant public, it is uncontested that those pharmaceuticals for which the trademarks are used are distributed to consumers only in connection with eventual hospital treatment or by a prescription written by a doctor. Therefore, the ordinary public, when buying and picking up the medicine at the pharmacy, does not have the possibility to choose between various products and, for that reason, is not at risk to confuse the products. In relation to trademark law, the relevant public consists mostly of professionals within the health sector, including doctors, hospital personnel and pharmacists.
Following this, and in light of the fact that patient safety is taken care of by a set of rules other than trademark law, the court finds that the board of appeal has rightfully considered that the trademarks IPRAXA and PRAXADA are not confusingly similar."
This decision is interesting because it forms part of the debate on whether pharmaceutical trademarks should be judged differently from other trademarks.
Mads Marstrand-Jorgensen, Norsker & Co, Copenhagen

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