Sanofi-Synth&eacutelabo succeeds where Glaxo fails

In Glaxo Group Ltd v Prisfar Produtos Farmaceuticos SA (Case 1000038/2003), the Examination Committee of the Romanian State Office for Inventions and Trademarks (SOIT) has refused Glaxo Group's opposition to the registration of FORTAL for pharmaceutical products.

Prisfar Produtos Farmaceuticos SA applied to register the mark FORTAL for goods in Class 5 of the Nice Classification, particularly pharmaceutical, veterinary and hygiene products. Glaxo opposed registration of the mark on the basis of its trademarks FORTUM and FORTAZ also protected in Class 5 for "pharmaceutical products and substances".

The SOIT rejected the opposition, stating that although both parties' marks covered similar goods, the phonetic differences between them eliminated the likelihood of confusion. It noted that likelihood of confusion and/or association with reference to pharmaceutical marks should be assessed from the average consumer's point of view.

However, in the parallel decision of Sanofi-Synthélabo SA v Prisfar Produtos Farmaceuticos SA (Case 1021081/2002), the SOIT has allowed Sanofi-Synthélabo SA's opposition to the same mark. Sanofi filed an opposition to the registration of FORTAL, claiming that it was confusingly similar to its FORTRAL mark for Class 5 "pharmaceutical products and substances".

The SOIT agreed, reasoning that a risk of confusion and association existed as (i) FORTAL and FORTRAL were very similar phonetically, and (ii) both covered pharmaceutical products. Accordingly, it refused registration of the FORTAL mark.

Both decisions may be further appealed to the Re-Examination Committee of the SOIT.

Alexandru Harsany, Nestor Nestor Diculescu Kingston Petersen, Bucharest