Standard for assessing confusion stricter for pharmaceutical marks

The Andean Community Court of Justice has issued a ruling on the interpretation of Andean Community Cartagena Agreement Committee Decision 344 on a Common Industrial Property Regime, which confirms that the standard for examining the likelihood of confusion between marks for pharmaceutical products is stricter than for marks for other types of goods because of the increased health risks involved.

In December 1997 Neurim Pharmaceuticals, an Israeli company, filed an application for registration of the mark CIRCADIN for products in Class 5 of the Nice Classification used in the treatment of insomnia. German pharmaceutical firm Bayer Aktiengesellschaft filed an opposition against registration based on its prior registration of CITARIN in the same international class. The national director of industrial property rejected Bayer's opposition and allowed the registration of CIRCADIN.

Bayer appealed to Ecuador's Administrative Litigation Court arguing, among other things, that the comparison between marks relating to pharmaceutical products should be stricter due to the increased risk of confusion and, consequently, "the evident danger that exists to the health of consumers". The court referred the question of whether a stricter confusion test was needed for pharmaceutical marks to the Andean Community Court of Justice.

As the litigation commenced prior to the implementation of Andean Community Decision 486 on a Common Intellectual Property Regime, the Andean Community Court of Justice analyzed Andean Community Cartagena Agreement Committee Decision 344 on a Common Industrial Property Regime, which was in force at the relevant date. It held that pursuant to Decision 344, the determining factor to be taken into consideration when comparing marks for pharmaceutical products is the risk to the health of consumers that might arise as a result of confusion at the moment of acquisition of the particular product. Thus, the court stressed that very strict criteria must be used when analyzing the likelihood of confusion between these types of marks.

For a discussion of a Danish case in which the court came to a similar conclusion, see Danish courts have remedy for confusion between pharmaceutical marks.

Amani Harrison, Bustamante & Bustamante, Quito