Opposition to AVASTAT registration rejected
In Rowex Limited v Merck & Co Inc, the acting controller at the Irish Patents Office has dismissed an opposition against the registration of the mark AVASTAT.
Rowex Limited applied to register AVASTAT as a trademark for "pharmaceutical preparations and substances". The application was opposed by Merck & Co Inc. The specification was later amended to read "prescription only pharmaceutical preparations and substances for the treatment of hypercholesterolaemia". When that amendment was advertised Merck maintained its objection. The acting controller dismissed the opposition and allowed the mark to proceed to registration for the following reasons:
- The opposition was based on Merck's proprietorship and use of the trademark AGGRASTAT for "pharmaceutical preparations; dietetic substances adapted for medical use; pharmaceutical preparations for the treatment of cardiovascular disorders; disinfectants; all included in Class 5" of the Nice Classification. Merck firstly objected to the application under Section 10(2)(b) of the Trademarks Act 1996 - likelihood of confusion. The acting controller assumed a notional fair use by Merck of the trademark AGGRASTAT in respect of a drug for the treatment of hypercholesterolaemia and considered whether confusion would be likely if the trademark AVASTAT were also used in relation to such a drug, available only on prescription. He held that doctors and pharmacists must differ from the average person in terms of their behaviour as "consumers", not only in the level of attention they pay to the "selection" (prescription and dispensing) of goods but also in the way in which they perceive and interpret word trademarks as used in relation to pharmaceuticals generally. Doctors and pharmacists, being constantly exposed to pharmaceutical trademarks and having specific knowledge of generic or non-proprietary drug names would be able to analyze subconsciously product names and to assimilate subliminally the information conveyed or suggested by them. They would constitute an exception to the general rule that the average consumer normally perceives a trademark as a whole and does not analyze its various details.
- As a result of an examination of an extract from the Monthly Index of Medical Specialities Ireland he inferred that statins are an established category of drugs used in the treatment of hypercholesterolaemia, and doctors and pharmacists encountering a drug for that purpose and having the suffix 'stat' in its brand name would make the assumption that the drug in question is another in that category. Therefore, the suffix 'stat', would convey as much about the nature of the drug in question as about its commercial origin. Therefore, confusion of the kind with which the law of trademarks is concerned would be unlikely to arise between the two trademarks here by reason only of the fact that each contained the suffix 'stat'.
- The words here also have an identical aural progression. However, the fact that the mark in the application is to be used solely in relation to prescription-only pharmaceuticals of a specific kind is sufficient to sway the balance of probabilities in favour of allowing the application to proceed to registration. The degree of care in prescribing and dispensing pharmaceuticals of that nature together with the likely perceptions that the persons concerned would have of the respective product names makes it unlikely that confusion would arise between them in practice.
- The acting controller acknowledged that the matter is not clear cut and the possibility of confusion cannot be ruled out if sufficient care is not taken but a likelihood of confusion should not be inferred on the basis that people who are under a strict duty of care may not always perform to the standards expected of them.
- The acting controller also dismissed the opposition under Section 10(4)(a) of the act - use liable to be prevented by virtue of the law of passing off, on the basis that there is no likelihood of any misrepresentation occurring and, therefore, of any damage being caused to Merck.
Patricia McGovern, DFMG Solicitors, Dublin
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