Trademark Office overturns provisional refusal against pharma mark

Pharmaceutical company EGIS Gyogyszergyar Nyilvanosan Mukodo Reszvenytarsasag (EGIS) has obtained a positive decision from the Moldavian Trademark Office (AGEPI) (October 31 2013).

AGEPI had issued a provisional refusal to register the international trademark ALTFORALLE for "pharmaceutical preparations for human use" on the ground that it was similar to the trademarks ALTORAL and ALTORAL (in Cyrillic characters), registered for "anti-allergic pharmaceutical products".

EGIS filed an appeal against AGEPI’s provisional refusal.

On appeal, EGIS' main arguments were as follows:

1. ALTFORALLE could not be considered to be similar to ALTORAL, taking into consideration:
   1. the difference in length between the two trademarks;
   2. the lack of semantic similarity between the trademarks due to the fact that none of them had a particular meaning; and 
   3. the fact that the double ‘L’ in ALTFORALLE put the emphasis on the end of the mark.
2. In order to further counteract any potential similarity between the products covered by the marks, EGIS decided to change the description of its products from "pharmaceutical preparations for human use" to "pharmaceutical preparations for gynaecological use".
3. "Pharmaceutical preparations for gynaecological use" could not be considered to be similar to "anti-allergic pharmaceutical products".
4. There was no likelihood of confusion, including no likelihood of association.
5. Moldova was the only country to have issued a provisional refusal against the mark on such grounds.

Based on the arguments brought before it, AGEPI issued a final decision in favour of EGIS, overturning its provisional refusal.

This final decision is important not only for EGIS, which is now able to use its trademark in all of the countries where protection was requested (including 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

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