ROSI mark opposition upheld

In Unipharm Ltd v SmithKline Beecham Plc (Application 157003, January 31 2007), the deputy registrar of trademarks has upheld an opposition to the registration of the mark ROSI.

SmithKline Beecham Plc filed an opposition against Unipharm Ltd's application to register the mark ROSI in Class 5 of the Nice Classification on the grounds that ROSI is a common abbreviation of rosiglitazone, the active ingredient in SmithKline's innovative drug AVANDIA indicated for the treatment of 'type two' diabetes.

The decision turned on two main questions, namely whether (i) the use of the name ROSI is common to the trade with regard to the drug rosiglitazone (as maleate), and (ii) the mark ROSI has qualities that require leaving it open to the trade in the field of pharmaceuticals.

The registrar ruled that the degree of descriptiveness of the propounded mark should be assessed primarily from the point of view of doctors and pharmacists who form the most relevant public, while also taking into account the average consumer, namely the patient, since the public consumers of rosiglitazone are chronic patients who may be well aware of the generic name of the active ingredient of the drug in addition to the AVANDIA proprietary name. Against this background, with respect to the first question, it was found that the term ROSI is used within the medical practice as an abbreviation for rosiglitazone and is thus "common to the trade".

The registrar noted that the use of the abbreviation 'ROSI' in various publications did not necessarily address an individual medication of a specific manufacturer or a particular formulation of rosiglitazone, but rather to the rosiglitazone molecule itself, in the context of treatment of 'type two' diabetes. Therefore, the registrar held that the propounded mark is descriptive contrary to the provisions of Section 11(10) of the Trademarks Ordinance, and that the mark has not acquired a secondary meaning pursuant to Section 8(b) since Unipharm had not commenced using the mark.

The registrar went on to examine, regardless of the use of the name actually made, whether the name ROSI should remain open to the public. He held that a mark that is a component of a generic name may be barred from registration if the complete generic word is easily identifiable from the mark. He also found, among other things, that the name ROSI is a self-suggesting abbreviation of the generic name rosiglitazone, which is an International Non-proprietary Name (INN). In this connection, he held that although Israel has not enacted regulations in line with the relevant provisions of the World Health Assembly (WHA) resolution which prohibit use of INNs as trademarks, Israel is obligated thereto on the international level, by virtue of its membership to the WHA.

Without determining whether the mere fact that the name ROSI suggests itself as an abbreviation of rosiglitazone was sufficient in order to reject the application for registration, the registrar emphasized that due to the nature of the goods covered by the application, namely drugs, the decision on the registration of the mark requires extra care, as the mark could cause confusion among various medications since rosiglitazone is marketed as a drug for the treatment of 'type two' diabetes in a number of forms: rosiglitazone maleate and rosiglitazone hydrogen chloride. The name ROSI is descriptive regarding both of the aforementioned equally and could cause confusion between the two products. The registrar further mentioned that the public interest requires that a clear distinction be observed between the brand name of the drug, which serves to indicate the source of the goods, and the name of the active ingredient thereof, which defines in effect its medical qualities.

Therefore, it was held that the propounded mark does not fulfil the conditions of Section 11(6) of the ordinance since it could mislead the public.

The registrar of trademarks ordered that Unipharm bear the costs of this proceeding in the amount of IS30,000.

David Gilat, Gilat Bareket & Co, Tel Aviv