Pharma company convinces Trademark Office to overturn provisional refusal

EGIS Gyogyszergyar Nyilvanosan Mukodo Reszvenytarsasag (EGIS Pharmaceuticals Public Limited Company) has obtained a positive decision from the Moldavian Trademark Office (AGEPI).

AGEPI had initially issued a provisional refusal to register the international trademark AMENT on the grounds that:

• the mark was descriptive with regard to medicines for the treatment of mental illnesses; and
• there was a risk of confusion among consumers in connection with other pharmaceutical preparations for humans.

In response, EGIS set forth the following arguments:

• in most dictionaries, the definition of ‘ament’ does not refer to ‘mental illness’ or ‘a person suffering from a mental illness’;
• one dictionary clearly stated that the word ‘amentia’ was used in the past to describe ‘a mental illness’; and
• Moldova was the only country to have issued a provisional refusal to register the mark on such grounds, so there were fair chances of overcoming the ex officio objection.

Further to the arguments brought before it, AGEPI issued a final decision in favour of EGIS, thereby overturning the provisional refusal.

AGEPI's final decision is important not only for EGIS, which is now able to use the trademark AMENT in all the countries where protection was sought (eg, Bulgaria, the Czech Republic, Poland and Romania) via its international registration, but also as a precedent. Arguably, AGEPI will take this decision into account in future similar cases.

Nicolae Muresan, Andra Musatescu Law & Industrial Property Offices, Bucharest

Andra Musatescu Law & Industrial Property Offices represented EGIS Pharmaceuticals in this case