Eira Heiska provides a guest post for Class 46 on a recent pharmaceutical trade mark judgment in Finland:

In a recent decision from the Finnish Market Court, the trade mark PEGORATIO, used for generic medicine, was considered confusingly similar to the earlier mark PEGORION. As a result of the infringement, all use of the mark PEGORATIO was ordered to be ceased, packaging and marketing materials destroyed and the Finnish trade mark registration for the mark PEGORATIO cancelled. In addition, the owner of the mark PEGORATIO was ordered to pay compensation, damages and legal costs.

Background

A decision issued by the Finnish Market Court on 20 August 2019 in case MAO:368/19 Orion Oyj v Ratiopharm Oy concerned trade mark infringement in the field of pharmaceuticals. The judgment is not final.

Using a trade mark that is identical or confusingly similar to an earlier mark may constitute trade mark infringement if the marks are registered for identical or similar goods or services. However, if the mark or a part of it lacks distinctive character, it cannot be protected through a trade mark.

Orion, a Finnish market-leading pharmaceutical manufacturer and the owner of the earlier trade mark PEGORION, filed a trade mark infringement claim against the use and registration of the later mark PEGORATIO owned by a generic medicine manufacturer Ratiopharm. Orion had applied for its mark in 2006, whereas Ratiopharm applied for registration for the mark PEGORATIO in 2014. Both of the marks were used for medicine for the treatment of constipation and sold via the same distributors, namely pharmacies.

Orion claimed that by bringing the pharmaceuticals into the market under the mark PEGORATIO, Ratiopharm had infringed Orion’s earlier rights. Orion further invoked enhanced distinctiveness of the mark PEGORION and unjustified exploitation of the goodwill. Ratiopharm on the other hand claimed that it was not infringing the earlier trade mark and it defended its mark by claiming that the earlier PEGORION mark was descriptive and therefore it lacked distinctive character.

Judgment

Ratiopharm's main defence was that the prefix PEG referring to Polyethylene glycol was descriptive and the suffixes RATIO and ORION referring to the parties of the dispute eliminated the likelihood of confusion. Ratiopharm argued that according to established naming practice in the generic medicine industry, it was common to combine the abbreviation of the active pharmaceutical ingredient of the medicine with the name of the manufacturer. The court found it proven that such naming practice did exist in the field of generic medicine.

According to Ratiopharm, the average consumers were aware of this naming practice and perceived the name of the medicine as the combination of the above-mentioned two elements. It was undisputed that PEG was an abbreviation of the active pharmaceutical ingredient Polyethylene glycol. Contrary to Ratiopharm’s claim, the court however found that the abbreviation PEG was not descriptive in the eyes of the relevant public as the relevant public did not associate PEG with Polyethylene glycol. The court stated that in the marketing material and in the product information of the pharmaceuticals, Polyethylene glycol was not mentioned as the active ingredient, but instead its other name Macrogol was mentioned in those materials.

Ratiopharm claimed that the relevant public was aware of the naming practice and would therefore recognize that the beginning of the mark refers to the active ingredient, even if it would not recognize the active ingredient in question. The court established that there was indeed a naming practice in the generic medicine industry, but the average consumers were not aware of it, and could therefore not understand that the beginning was referring to the active ingredient without recognizing the active ingredient in question. Therefore, the court came to the conclusion that the existence of such naming practice did not prevent the risk of confusion between the marks.

According to the court, the average consumer did not notice that the marks in question consisted of two parts, the abbreviation of the active pharmaceutical ingredient and the name of the manufacturer. Therefore, the court found that the marks did not have a separate dominant part nor did they have parts that would lack distinctive character. It was undisputed that the goods covered by the marks were identical. Regarding the similarity of the signs, the court found the marks to be both verbally and aurally similar as the first five letters PEGOR were identical and both marks had the letter combination IO at the end. As the marks did not possess any conceptual meaning, the court did not assess the conceptual similarity of the marks.

As the marks were found to be confusingly similar, the court found it unnecessary to assess Orion's claim of enhanced distinctiveness of the mark PEGORION and the unjustified exploitation of the goodwill. All the use of the mark PEGORATIO was ordered to be ceased, packaging and marketing materials destroyed and Finnish trade mark registration for the mark PEGORATIO cancelled. In addition, Ratiopharm was ordered to pay €50,000 as compensation and damages and €136,000 in legal costs.

Eira Heiska is a brand protection lawyer with Roschier, a member of MARQUES