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Swiss Practice re "SAN" and "SANA" for pharmaceuticals


The Swiss IPO (Institute for Intellectual Property) has clarified its practice regarding the prefixes SAN and SANA, which are commonly used in the pharmaceutical industry.

Regarding SANA, it held that SANA is descriptive for health. When used for pharmaceuticals, it does not enjoy protection; however, compound signs of SANA in conjunction with other syllables can be registered. Their protection is limited to the part(s) not consisting of SANA. The result is that there is, according to the Swiss IPO, no likelihood of confusion between SANOFI and SANAPHYT for pharmaceutical products in class 5 (summary of decision of 27 June 2012 here).

Regarding SAN, on the other hand, the Swiss IPO held that this is not descriptive and also not weakened by frequent use (at least this has not been shown so far), and therefore enjoys a normal scope of protection. The IPO therefore found a likelihood of confusion between SANDOZ and SANKOM for pharmaceutical products in class 5 (summary of decision of 28 June 2012 here).

I find the distinction made between SAN and SANA rather non-intuitive. Practitioners should be aware of the practice when filing and deciding whether to oppose. Note that these decisions are not necessarily final (it is not evident from the IPO's website whether they have been appealed). I shall post the outcome of an appeal should it become known.

Posted by: Mark Schweizer @ 14.53
Tags: Swittzerland, scope of protection,
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