On 30 September 2011, GENERIS - FARMACÊUTICA, S.A. (‘GENERIS’) applied for the registration of Portuguese Trade Mark no. 489350 DIOGEST for ‘Medicines; Pharmaceutical products; sanitary preparations for medical and pharmaceutical purposes; dietetic substances adapted for medical use, food for babies; dietary supplements; disinfectants; biocides’ (Class 05). NOVARTIS AG (‘NOVARTIS’) opposed the registration, claiming that there was a likelihood of confusion with its prior ‘DIOVAN’ trade marks (Community Trade Marks nos. 138107, 421180, 421206, 2011633, 9729807) covering pharmaceutical products (Class 05). On 27 June 2012, INPI dismissed the opposition and granted the trade mark registration. Unsatisfied with INPI’s decision, NOVARTIS filed an appeal (Case no. 384/12.1YHLSB).

On 12 November 2013, the Intellectual Property Court issued its decision, which is published in today’s Portuguese Industrial Property Bulletin. In it, the court stated that the priority of NOVARTIS’ signs and the similarity of the goods covered by trade marks were not questioned.

The question to be decided rested on the possibility of the similarities between the signs leading to a likelihood of confusion. In common, all the signs shared the element ‘DIO’. Analysing the Earlier Trade Marks, the Court decided that ‘DIO’ was not the predominant element of the sign, as the other syllable (‘GEST’) had the same importance in it: both syllables of the word were written in the same font and size, without any graphical differentiation and, therefore, no reason to separate the word in two elements existed. As a result, the court found that stating that the costumer would only retain in its memory the word ‘DIO’ would be purely speculative. The same reasoning could be found in relation to the sign ‘DIOVAN’, which the consumer would remember in its entirety.

Considering the above, the Court explained that the consumer perceives the marks as a whole and does not proceed to analyse their various details. As a result, and upon comparison of the two words as a whole, the Court found that there is no visual or phonetic similarity between 'DIOVAN' and 'DIOGEST'. It further referred to the coexistence of several other signs in the market beginning by ‘DIO’, such as ‘DIOMICETE’, ‘DIORALYTE’ and ‘DIOSMINA’. Therefore, the Court dismissed the appeal and confirmed the registration of Portuguese Trade Mark no. 489350 “DIOGEST”.