Extra care must be taken when registering pharma marks

In Trademark Application 216996 AFRIN (November 24 2010), the Israeli Commissioner of Patents, Trademarks and Designs has ruled, among other things, that extra caution should be exercised when allowing the registration of a mark which is similar in appearance and sound to an existing registered mark, where the mark applied for is intended to be used for drugs.
Schering-Plough Ltd filed an application for the registration of the trademark AFRIN in Class 5 of the Nice Classification for "nasal decongestants, nasal moisturisers, saline nasal sprays, nasal drops preparations and decongestant preparations". The examiner at the Israel Trademarks Office objected to the registration of the mark on the grounds that:
  • a similar mark, EPHRINE, was already registered for similar goods; and
  • therefore, there was a likelihood of confusion between the two marks.
Schering-Plough argued that there was no real likelihood of confusion between the marks, since:
  • the two marks were intended to be used for completely different goods: AFRIN is used for nasal decongestants, while EPHRINE is used for eye drops;
  • the marks were visually dissimilar since the EPHRINE registration covers both the Hebrew and the English word 'ephrine', while Schering-Plough's application is only for the English word 'afrin'; and
  • the products bearing the EPHRINE mark are prescription drugs, while those bearing the AFRIN mark are intended to be sold over the counter.
The examiner maintained his objection and Schering-Plough appealed to the commissioner.
In deciding whether AFRIN was confusingly similar to EPHRINE, the commissioner applied the well-established 'three-part test' (visual and phonetic similarity of the marks, similarity of the products and their potential consumers, and the totality of the circumstances). The commissioner found that the marks were similar both visually and phonetically and, therefore, were confusingly similar.
The commissioner noted that, while the addition of the Hebrew translation of the word 'ephrine' to the cited registration created a visual distinction between the two marks, the overall impression would be that the marks are identical, since consumers would remember the sound of the EPHRINE mark, which is highly similar to Schering-Plough’s AFRINE mark.
With regard to the similarity of the goods, the commissioner held that, even though the products sold under the EPHRINE mark are prescription drugs, while those sold under the AFRINE marks are over-the-counter drugs, there was still a risk of confusion since it was most likely that consumers would ask for the assistance of a pharmacist, and both marks are almost identical from a phonetic point of view.
As for the relevant public, the commissioner ruled that the two marks targeted the same group of customers (ie, the general public), as the drugs covered by both marks were intended to treat common illnesses. 
Turning to the totality of the circumstances in this case, the commissioner explained that extra caution should be exercised when allowing the registration of a mark which is similar to a registered mark and is intended to be used for drugs, since one cannot predict whether consumers will be confused between the two products in their home.                                                                            
Based on all of the above, the commissioner refused to register the AFRIN mark.
Karen Ekburg and Gilad Shay, Herzog Fox & Neeman, Tel Aviv

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