Trademark Office overturns provisional refusal to register ‘femin’ mark
EGIS Gyogyszergyar Nyilvanosan Mukodo Reszvenytarsasag has obtained a positive decision from the Moldavian Trademark Office (AGEPI).
AGEPI had issued a provisional refusal to register the international trademark FEMINEGI for pharmaceutical preparations for gynaecological purposes in Class 5 of the Nice Classification, on the grounds that it was similar to the trademarks FEMINELLA and FEMINEX, registered for pharmaceutical products in Class 5.
EGIS filed an appeal against AGEPI’s provisional refusal.
EGIS main arguments were as follows:
- FEMINEGI could not be considered to be similar to either FEMINELLA or FEMINEX, taking into consideration:
- the difference in size between the trademarks;
- the lack of semantic similarity between the marks, due to the fact that none of them had a meaning;
- the fact that the ending of the FEMINEGI mark, 'egi', was a shortened version of the name of the applicant, EGIS; and
- the fact that the trademarks had only the element 'femin' in common, which, in the local understanding, was linked to the terms ‘woman’ or ’womanhood’;
- the products were dissimilar (ie, "pharmaceutical preparations" v "pharmaceutical products");
- there was no likelihood of confusion, including no likelihood of association; and
- Moldova was the only country to have issued a provisional refusal on such grounds.
Based on the arguments brought before it, AGEPI issued a final decision in favour of EGIS, overturning its provisional refusal.
The final decision of AGEPI, which was notified on December 13 2013, is important not only for EGIS, which is now able to use the trademark 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
Andra Musatescu Law & Industrial Property Offices represented EGIS in this case
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