Owner of IMIGRAN successfully opposes registration of IMITAG

In Pinewood Laboratories Limited v Glaxo Group Limited (February 4 2009), the acting controller has upheld an opposition against the registration of the mark IMITAG for pharmaceutical preparations and substances.

Pinewood Laboratories Limited applied to register the mark IMITAG for goods in Class 5 of the Nice Classification. On advertisement, the application was opposed by Glaxo Group Limited on the basis of its ownership and use of the trademark IMIGRAN. IMIGRAN is registered in Class 5 in respect of pharmaceutical preparations and substances, both in Ireland and as a Community trademark. In particular, IMIGRAN is used in relation to pharmaceutical preparations for the treatment of migraine, the active ingredient of which is a drug called sumatriptan. Pinewood has been selling a sumatriptan formulation under the mark IMITAG since January 2007. Imitag is a so-called 'generic' drug which has been put on the market following the expiry of Glaxo’s patent protecting compositions containing sumatriptan. 

The acting controller upheld the opposition and refused registration of the trademark notwithstanding the fact that the two products coexisted in the marketplace and that no evidence of confusion between them was adduced by Glaxo. Neither was Pinewood’s mark deemed to be similar to Glaxo’s by the Irish Medicines Board, which granted a marketing authorization for Imitag. 
The acting controller was of the view that the first syllable of a word mark is generally more important. Therefore, the identity of the first two syllables of the three-syllable marks IMIGRAN and IMITAG created a high degree of visual and aural similarity between them. According to the acting controller, the prefix 'imi' is quite distinctive, as it has no meaning in the context of the relevant goods and its use in both marks enhances the overall similarity between them. Although Glaxo’s trademark IMIGRAN might be seen as making an oblique reference to migraine, it is essentially a meaningless word, the overall impression of which is determined by its visual and aural impact. A very similar overall impression is given by IMITAG. 
The acting controller pointed out that both marks are used for products intended for the treatment of migraine. The average consumer is the average person who suffers from migraine, but the consumer pool also includes doctors and pharmacists who prescribe and dispense migraine treatments. Although the latter may be expected to exercise a high degree of professional care in the performance of their duties, that factor must be in part balanced by the end user’s ability to make those healthcare professionals take into account his or her perception of the mark at issue and, in particular, his or her requirements or preference. 
According to the acting controller, the question to be considered was thus as follows:

What is the likelihood that the average migraine sufferer, who has used Glaxo’s Imigran product and who was offered Imitag as a treatment for migraine, would assume that it was the product that he already knows or that it was connected with that product, in the sense that it emanated from the makers of Imigran or from a related undertaking?” 

The acting controller's view was that there was a very real likelihood that the average person would make such an assumption. Even in the case of a migraine sufferer who had used Imigran over a long period of time and was very familiar with the name such that he or she would immediately notice that Imitag was a different name, it seemed likely that he or she would nevertheless assume some connection between the two. According to the acting controller, the likelihood of two unrelated undertakings using similar brand names for identical pharmaceutical products seemed remote. To the long-time user of Imigran, it would seem more likely that Imitag was simply a new form of Imigran, or perhaps a rebranding of the same product. Thus, while consumers might suffer no material loss or damage arising from their confusion, commercial damage to Glaxo would certainly ensue. Glaxo’s customers would be lost to a competitor as a direct result of the confusion arising from the use by the latter of a similar trademark for an identical product. 
Glaxo also alleged that the application had been filed in bad faith, but the acting controller held that the allegation had not been properly made and particularized in the notice of opposition. Glaxo should have stated precisely why it alleged that the application for registration had been filed in bad faith. Even if the charge of bad faith was fully and fairly laid by Glaxo, the acting controller was of the view that he would have dismissed it on the basis that it had not been substantiated by the relevant evidence nor supported by compelling argument.   

Patricia McGovern, DFMG Solicitors, Dublin

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