'Panto' held to be descriptive for Class 5 goods

The Estonian Board of Appeal has dismissed Nycomed GmbH’s opposition against the registration of the trademark PANTOSEC by Mepha Schweiz AG (formerly Mepha AG) on the grounds that there was no likelihood of confusion with the earlier trademarks PANTOSAL and PANTOPAC (Decision 1351-o, August 26 2013).

On February 5 2010 Swiss company Mepha applied to register the word mark PANTOSEC in Class 5 of the Nice Classification (Application M201000156). German company Nycomed opposed the application based on its prior word marks PANTOSAL (CTM Registration 006383137) and PANTOPAC (CTM Registration 003622362) in Class 5.

Nycomed was of the opinion that the trademark PANTOSEC on the one hand, and PANTOSAL and PANTOPAC on the other, were visually and phonetically similar due to their identical beginning. It also referred to established case law stating that the beginning of a sign is more important than its ending in the overall impression produced by that sign. Further, Nycomed alleged that the more similar the marks are and the more distinctive the mark applied for is, the less similar the goods need to be. The goods covered by the trademarks were partly identical, partly similar. Nycomed argued that it could not be concluded that the prefix ‘panto’ indicated the active ingredient pantoprazole.

Nycomed thus contended that the application should be refused under Article 10(1)(2) of the Estonian Trademark Act because PANTOSEC was highly similar to the earlier marks PANTOSAL and PANTOPAC, which were registered for identical or similar goods and, therefore, there was a likelihood of confusion.

In response to the opposition, Mepha argued that the relevant public consisted of healthcare professionals, as well as patients suffering from gastrointestinal illnesses, who generally show a higher-than-average level of attention.

The prefix ‘panto’ is common to all three trademarks. Goods covered by these trademarks include pharmaceutical preparations and, more specifically, medicines for treating gastrointestinal disorders. According to the Register of Medicinal Products authorised in Estonia, there are 25 different medicines containing the active ingredient pantoprazole. Mepha also referred to the international non-proprietary names (INN) which identify pharmaceutical substances or active pharmaceutical ingredients. Each INN is a unique name that is globally recognised and is public property.

Mepha also pointed out that the prefix ‘panto’ had lost its distinctive character and had a descriptive meaning, arguing that several companies had applied for trademarks containing the prefix ‘panto’. Mepha concluded that the trademarks in question were not visually and phonetically similar due to the presence of the distinctive suffixes ‘pac’, ‘sal’ and ‘sec’.  

The Board of Appeal dismissed the opposition, finding that the trademarks at issue were dissimilar. In particular, the board found that the fact that the marks shared the prefix ‘panto’ - which is not distinctive - was not sufficient to find that they were confusingly similar. The prefix ‘panto’ had a descriptive meaning indicating the active ingredient of the medicines.

The board also stated that the goods covered by the marks were identical or similar. However, this was not sufficient to find that there was a likelihood of confusion between the trademarks, taking into account the fact that the relevant public had a higher-than-average level of attention.

Anneli Kapp, Käosaar & Co, Tartu