The battle of the 'Algos'

These drugs are among the leaders in the market for painkillers in Hungary, and different types of Algoflex are used for different kinds of pain. Another company, Teva, has registered a trademark for the word ‘Algoprofen’ and obtained a marketing authorisation for this name as a painkiller.

The cancellation action was based on the legal grounds of confusing similarity and likelihood of association, and also on the legal ground that both Algoflex and Algopyrin have good reputations, so the use of the mark ‘Algoprofen’ without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of these earlier trademarks.

An important part of the procedure was that the petitioner commissioned a consumer survey to establish the repute of its trademarks as the second parts of the earlier and the attacked trademarks did not appear to be similar, and also because the term ‘profen’ hinted at the active ingredient ibuprofen, which is also the active ingredient of Algoflex. The outcome of the survey was very clear and positive: Algoflex and Algopyrin are both among the market leaders for painkillers in Hungary.

"both earlier trademarks enjoyed good reputations and that there was therefore a danger that consumers would establish a link between the reputed marks and the attacked mark."

The other most important outcome of the survey was that consumers categorised fantasy names, and also the unknown name Algoprofen (since it is not yet on the market), starting with ‘Algo’ as belonging to the same product group as Algoflex and Algopyrin. It also turned out from the survey that the average consumer did not know the meaning of the Greek word ‘Algo’ and therefore considered it to be a fantasy product name constituting a family group for Algoflex and Algopyrin.

The survey also demonstrated the opposite of what the trademark owner of Algoprofen argued, ie, that the average consumer knew the meaning of the term ‘Algo’, which means ‘pain’ in Greek, so that it was a descriptive element of the trademark and did not have distinctive power. It also relied on a number of other trademarks starting with ‘Algo’ but did not prove that these trademarks were used or known. Because most of them were not used and some had only insignificant market share, the Hungarian Intellectual Property Office (HIPO) did not consider these other trademarks.

As a result of the outlined arguments, HIPO ordered the cancellation of the trademark ‘Algoprofen’, which has become final and definite.

Regarding confusing similarity and likelihood of association, it was stated by HIPO that the trademarks ‘Algoflex’ and ‘Algopyrin’ form a trademark family. Reference was made to the European Court of Justice’s C-234/06 Bainbridge decision, which stipulates the conditions for a trademark family to exist.

The owner must have several trademarks with the same common element having distinctive character;

All trademarks should be present on the market, meaning all should be used; and

Consumers should associate the common element with the same company.

The trademark family and the common element enjoy a higher level of protection. HIPO found these preconditions to be present and therefore accepted that the petitioner has a trademark family starting with ‘Algo’ and that because of this trademark family consumers may associate the attacked ‘Algoprofen’ trademark with the trademark family ‘Algo’.

It was also taken into account by HIPO that both earlier trademarks enjoyed good reputations and that there was therefore a danger that consumers would establish a link between the reputed marks and the attacked mark. It was established that the term ‘Algo’ has to be considered as having a strong distinctive character. Moreover, it was declared that the term ‘Algo’ is not descriptive (as argued by the owner of the attacked mark), and that even if the term ‘algo’ has a Greek origin referring to an effect of the medicine, this is not known by the average consumer.

HIPO also referred to the General Court’s Novartis decision No. T-331/09 stating that there are two groups of relevant consumers: one, physicians and medical professionals; the other, average consumers. The level of attention of these groups varies and the lower attention level of average consumers has to be taken into account. In addition, consumers may confuse medicines at home when they take them, even if the medicine is a prescription drug.

Dr Judit Lantos is an attorney at law and partner at Danubia Patent & Law Office LLC. She can be contacted at: judit.lantos@danubia.hu