Pharma marks with identical prefix and ending held to be similar

European Union
In Farmeco AE Dermokallyntika v Office for Harmonisation in the Internal Market(OHIM) (Case T-131/09, October 28 2010), the General Court has held that there was a likelihood of confusion between the marks BOTOX and BOTUMAX.
 
Greek company Farmeco AE Dermokallyntika applied to register the word mark BOTUMAX as a Community trademark in respect of products in Classes 3, 5 and 16 of the Nice Classification. On September 16 2004 US company Allergan Inc filed a notice of opposition based on several earlier registrations for the trademark BOTOX - in particular, Community registrations for the word mark BOTOX and the device mark BOTOX for goods in Class 5.
 
On October 26 2007 the Opposition Division of OHIM rejected the opposition. However, on February 2 2009 the Fourth Board of Appeal partially annulled the decision of the Opposition Division, and rejected the application for the registration of BOTUMAX except for some goods in Class 16. The Board of Appeal found that there was a likelihood of confusion between the marks in respect of goods in Class 5, which was even greater because the earlier marks had acquired a high distinctive character in respect of pharmaceutical preparations for the treatment of wrinkles. The board added that, under Article 8(5) of the Community Trademark Regulation (40/94), the average consumers could make a link between the marks. Farmeco appealed.
 
The General Court first held that the Board of Appeal was right to find that the marks were similar to an average degree. From a visual point of view, the court pointed out that the first three letters ('B', 'O' and 'T') of the marks were identical and in the same order, which was particularly important considering that consumers generally pay greater attention to the beginning of trademarks. The presence of the three middle letters ('U', 'M' and 'A') in the mark applied for and of the second 'O' in the earlier marks was insufficient to outweigh the visual similarities.
 
From a phonetic point of view, the court found the marks were similar because:
  • the first syllable of the marks was identical;
  • the marks produced the same final sound on account of the letter ‘X’ at the end of both of them; and
  • the sequence ‘uma’ in the mark applied for would not be perceived as self-standing by the relevant public.
From a conceptual point of view, the court agreed with the board that the marks were fanciful words, and that any assumptions about their allusiveness (eg, a reference to a toxic substance because of the suffix 'tox') was only hypothetical.
 
The court also held that the earlier marks:
  • had a particularly high distinctive character with regard to pharmaceuticals for the treatment of wrinkles; and
  • enjoyed an indisputable reputation with respect to these goods.  
Based on Article 8(5) of the regulation, the court confirmed that use of the BOTUMAX mark would:
  • take unfair advantage of the distinctive character or repute of the earlier marks; and
  • "unquestionably" result in the dilution of the distinctive character of the earlier marks.
Arguably, the likelihood of confusion between BOTOX and BOTUMAX is debatable. The fact that both marks covered pharmaceutical products must have played a role in the court's decision. Under European case law, it seems that pharmaceutical trademarks will be considered to be similar if they share the same prefix and a final letter or syllable - especially where the ending is unusual.
 
The fact that the court highlighted the indisputable reputation of the BOTOX marks, as well as the striking wording used in the decision, show that any party considering using a pharmaceutical trademark with the prefix 'bot' should proceed with care. However, Allergan’s monopoly over the prefix 'bot' must not be such that any mark using this prefix would be rejected systematically.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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