1 May 2015TrademarksAlexander Thünken

Pharma trademarks: Assessing the likelihood of confusion in the EU

Trademarks for pharmaceutical preparations are often created from descriptive terms, and sometimes from International Nonproprietary Names (INNs). Such trademarks are considered to be particularly attractive as they immediately inform about the purpose and indication of the respective pharma product.

However, the downside of such trademarks is obvious: they may sometimes be hard to register. Moreover, they traditionally tend to have a reduced scope of protection, meaning that often infringement can be established only in cases where the conflicting signs are more or less identical. The recent case law of the EU’s General Court, however, seems to point towards a different—perhaps opposite—direction.

The Biocef v Biocert case

In its judgment of December 10, 2014, the General Court held that the marks ‘Biocef’ and ‘Biocert’ are confusingly similar in relation to pharma preparations. Novartis had filed an opposition against the mark ‘Biocert’ on the basis of its earlier Austrian word mark ‘Biocef’.

After the opposition was dismissed by the Opposition Division at the Office for Harmonization in the Internal Market, and the Fourth Board of Appeal confirmed this dismissal (particularly because ‘Bio’ is descriptive for pharmaceuticals and due to the allegedly heightened level of attention of the relevant public) the General Court annulled the decision and found in favour of Novartis.

The court argued that the visual and aural similarities between the marks at issue would arise not only from the presence of the element ‘Bio’ in the marks, but also from other factors, including the almost identical length of the signs and the fact that they share the first five letters.

Given the average degree of distinctiveness of the earlier mark, the court found that there is a likelihood of confusion, even if the public is considered to have a heightened level of attention. According to the court, the weak distinctive character of one element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public.

In essence, the court could not deduce that only the distinctive element of a mark that comprises both a descriptive and a distinctive element is decisive when assessing likelihood of confusion.

The decision is in line with other relatively recent judgments previously issued by the General Court.

The Nicorette v Nicorono case

On June 24, 2013, the court took a similar approach. It found that the marks ‘Nicorette’ and ‘Nicorono’, which were both seeking protection or registered for products and chewing gum related to stopping smoking, would be confusingly similar. The Second Board of Appeal had held that due to the weak distinctive character of the element ‘Nico’—a reference to nicotine—at the beginning of the marks, the attention of the relevant public would be drawn to the differing ends of the marks, so there would be no likelihood  of confusion.

The General Court, however, did not share this view and concluded that despite ‘Nico’ highly evoking a characteristic of the goods in question, meaning it could be considered to have a weak distinctive character, ‘Nico’ was likely to attract the attention of the relevant public at least as much as the elements ‘rette’ and ‘rono’ because of its length and position at the beginning of the marks.

The Femibion v Femivia case

In its judgment of July 16, 2014, the General Court held that the marks ‘Femibion’ (figurative) and ‘Femivia’ were too similar. Both marks sought protection or were registered for pharma preparations for treating diseases affecting women. The prefix ‘Fem’, which could clearly be perceived as being an abbreviation deriving from the Latin word ‘femina’ (woman), would have a weak distinctive character for the goods covered by the marks based on its descriptive character.

However, that fact doesn’t mean that ‘Fem’ is not taken into account when comparing the signs at issue. Even if the average consumer displayed a high level of attentiveness, he or she only rarely has the chance to make a direct comparison between the different marks, and instead must place his or her trust in the imperfect picture of them that he or she has kept in mind. Hence, the marks would be confusingly similar.

All the judgments discussed above are somewhat surprising given that the General Court regularly starts from the assumption that the level of attentiveness of the relevant public including end consumers would be “heightened” or “higher than average”.

Nevertheless, pharma trademarks containing clearly descriptive elements do not seem to be affected in their scope of protection. Rather, such marks appear to keep the same importance as the distinctive element.

In this author’s view, the General Court’s core finding can be found in the Biocef v Biocert judgment. As far as applicants are barred from obtaining a monopoly on the respective descriptive element (like ‘bio’, ‘nico’ or ‘fem’), and given that the existence of a likelihood of confusion leads solely to the protection of a certain combination of elements without actually protecting the descriptive element of that combination, the latter element will keep the same importance as the distinctive element in that combination.

So, it seems that the scope of protection of pharma trademarks containing a descriptive element is wider than one would have thought. It remains to be seen whether these findings will, one day, be confirmed by the Court of Justice of the European Union.

Alexander Thünken is a partner at  Uexküll & Stolberg in Germany. He is a German attorney-at-law and certified specialist in industrial property law. His practice focuses on all aspects of trademark law. He can be contacted at:

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at