In disputes over pharmaceutical trademarks, the courts take a precautionary approach to exclude any risk of confusion between two medicines marketed under similar brand names. However, this restrictive approach has been qualified by EU case law, as Florence Chapin explains.
On 15 March 2023, the General Court issued its decision in Novartis AG v EUIPO (Case T‑175/22), in invalidity proceedings initiated by Novartis AG. As background:
- Novartis sought the invalidity of AstraZeneca’s mark ‘Breztri’ based on its earlier marks ‘Onbrez’, ‘Brezilizier’ and ‘Breezhaler’ for the same goods (class 5, (pharmaceutical products or preparations);
- On appeal to the EU General Court, the main points of discussion related to the level of attention of the relevant public in order to assess the likelihood of confusion, as well as the increased distinctiveness of the earlier marks.
Pharmaceutical trademarks and the need for public protection
As a preliminary point, there are several doctrines and lines of case law as regards pharmaceutical trademarks: some of them consider that the assessment of the likelihood of confusion should be broad to avoid the risk of a person taking the wrong medicine; others consider that, since medicines are prescribed by professionals, such risk is low. Professionals are supposed to pay close attention to the medicines they prescribe, and consumers pay close attention when choosing medicines.
At the level of the Court of Justice of the European Union (CJEU) in particular, EU case law has mainly opted for this second approach, considering that the relevant public has a particularly high degree of attention (see, for example, Pentasa v Octasa).
After its invalidity action against the ‘Breztri’ mark had failed, Novartis had first appealed to the EUIPO’s Board of Appeal. However, the Board also ruled against it, finding that the relevant public consisted of both medical professionals with a high degree of attentiveness and end consumers with a “higher than average” degree of attentiveness. While Novartis did not dispute that the relevant public consisted of both medical professionals and the general public, it did dispute the Board of Appeal’s finding that medical professionals and end consumers displayed the same high degree of attentiveness, distinguishing between:
1. medical professionals, whose attention would be both high and of a high ‘quality’ on account of their training and professional activity; and
2. end consumers, whose ‘quality’ of attention was necessarily different from that of medical professionals in that they do not have medical or pharmaceutical training (especially if they are adolescents and elderly people).
However, the EU General Court disagreed, keeping in line with the established case law on the level of attention of the relevant public.
Distinctive and dominant elements in pharmaceutical trademarks
The second major point raised in these proceedings concerned the assessment of the distinctive character of the marks and, ultimately, the likelihood of confusion between them.
Pharmaceutical brand names often contain a prefix or suffix evoking the active ingredient or main molecule; however, here the Board of Appeal considered that the trademarks at issue did not consist of word elements that would have a meaning for the relevant public and that that public would not break them down.
Further, the Board pointed out that the groups of letters ‘brez’ and ‘breez’ had no meaning for that public and that it was “far from obvious” that the same public would associate the group of letters ‘haler’ in the earlier mark ‘Breezhaler’ with the word ‘inhaler’, ‘lizer’ in the earlier mark ‘Brezilizier’ with the word ‘nebulizer’, and ‘tri’ in the contested mark with the word ‘tripletherapy’, as Novartis claimed.
Furthermore, Novartis had not put forward any evidence to demonstrate the existence and use of the abbreviations at issue in the medical field. Given the above, the meaning of the endings of the marks (‘tri’/‘lizer’/‘haler’) could only be established by passing through several stages of reasoning, so that the link was neither direct nor specific.
In addition, the ‘brez’/‘breez’ element of the marks was not shown to be distinctive. Its position at the beginning of the marks was not sufficient to render it distinctive within the marks and to dominate the overall impression produced by the marks. Visually and phonetically, the marks coincide only in the sequence ‘brez’/‘breez’, the other letters and the length of the signs being substantially different.
As the principle is that the examination of the similarity of the marks must take into account the overall impression produced by these marks, the signs in dispute were found to be only similar to a low degree (‘Breztri’/‘Brezilizier’/‘Breezhaler’) or not similar (‘Breztri’/‘Onbrez’).
Enhanced distinctiveness of the earlier marks
Novartis also sought to put forward arguments relating to the enhanced distinctiveness of its earlier marks. Here, the conclusion of the EU General Court differed from that of the Board of Appeal. The court noted that the acquisition of enhanced distinctiveness may result from the use of a mark in conjunction with another mark, provided that, as a consequence of that use, the mark at issue may alone identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking. The case law does not require the mark at issue to appear on its own in the evidence submitted for that purpose, therefore.
In the present case, the Board of Appeal had confined itself, in essence, to justifying the lack of enhanced distinctiveness of the earlier mark ‘Breezhaler’ on the basis that the evidence provided by Novartis did not present that mark on its own, but only in combination with other marks or signs. In that regard, it had merely asserted that “even if consumers were to notice the name ‘Breezhaler’ on the product packaging, it is not certain that they would see it as a sign of a particular commercial origin”.
However, that assertion was purely declaratory, if not speculative, in that it was not based on any specific analysis of the perception of the relevant public of combinations of trademarks displayed on the goods in question. This reasoning led the Court to reject the existence of a likelihood of confusion between the conflicting marks, with the Court stating that it is common for pharmaceutical trademarks to be long and complex and therefore difficult to remember for the general public.
In the present case, owing to the impact of the choice of the product on health, the general public would pay great attention to the trademark displayed on the products and would make a particular effort to ensure that it purchases the correct product. Further, those goods are most often purchased in pharmacies, potentially on the advice of a professional. Thus, the relevant public, even if it is not professional, would not attribute the same commercial origin to goods bearing trademarks which have a low degree of visual and phonetic similarity and have no conceptual meaning, such as in the present case.
In any event, having regard to the low degree of similarity, at most, between the marks at issue and, above all, to the high level of attention of the relevant public, there was no likelihood of confusion, regardless of the degree of the normal or enhanced distinctiveness of the earlier marks.
Key takeaways from the ruling
The decision is in line with the prevailing approach in the assessment of the likelihood of confusion between pharmaceutical trademarks, which is rather restrictive, considering that the relevant public has a particularly high degree of attention when it comes to medicines which affect their health.
However, this restrictive approach has been qualified by case law, which can assess the likelihood of confusion between pharmaceutical trademarks more broadly.
This is in line with the precautionary principle, which aims to exclude any risk of confusion between two medicines marketed under similar names.
This article first appeared in WTR Daily, part of World Trademark Review, in April 2023. For further information, please go to www.worldtrademarkreview.com.
Florence Chapin is a Trademark and Design Attorney at Novagraaf in France.