Trade mark law, case II GSK 296/06

September 30th, 2007, Tomasz Rychlicki

By its decision of 15 July 2003, the Polish Patent Office has granted a right of protection for FEMISTEN R-146192 trade mark for goods in Class 5 such as pharmaceuticals, pharmaceutical preparations. On 28 July 2004, the Patent Office received a notice of opposition, filed by Solvay Pharmaceuticals B.V. from Netherlands, and it based its oppsition on FEMOSTON IR-624469 trade mark also registered for goods in Class 5. The Dutch company argued that the FEMISTEN is confusingly similar to FEMOSTON both in the phonetic, and aural aspects, and both signs are meant to designate the same kind of goods. The owner of the registration requested the PPO to dismiss the case.

The PPO in its decision of 16 November 2005 dismissed the application for the invalidation of the right of protection for FEMISTEN trade mark. In support of the decision the PPO stated that in its opinion there is no similarity of the signs and it likely will not mislead consumers as to the origin of goods. Both signs were considered as a whole as fanciful. The component FEMI in FEMISTEN trade mark indicates that the product is designed for women. There was some similarity in structure and wording of these signs (the two characters have the same number of letters and syllables, and the difference comes down to differences of vowels in these assays), but in the assertion of the PPO it would not mislead the recipients as to the origin of the goods from a particular entrepreneur. FEMOSTON is a trade mark meant for designation of pharmaceutical preparations used in hormone therapy, which are bought only on prescription, so these goods are available to the customer through doctors and pharmacists. Products bearing FEMISTEN are the skin-care goods, available without a prescription and not associated with hormone therapy. The buyers of pharmaceutical products are adults, which, thoughtfully make their choice by paying attention.

Solvay filed a complaint. The Voivodeship Administrative Court in Warsaw in its judgment of 25 May 2006, case file VI SA/Wa 537/06 dissmied the complaint and ruled that the collected evidence made it clear, that the proprietor of FEMISTEN trade mark at the moment of filing a request for invalidation did not market the goods covered by the disputed mark, but according to the declaration of the holder, Glaxo intended to bring to the market skin care preparations in the form of ointments and gels available without prescription. The Court considered the findings of the Patent Office in this regard as correct. The legal doctrine and the case law established already the method of examining of the homogenity of goods. It should be assessed according to the type of the goods, purpose of the goods and the conditions of their sale, and the mere fact of belonging to a common class of goods is not a decisive argument for the recognition of the goods as belonging to the same kind. The Court ageed with the comparison of these signs that was made by the PPO and noted that the similarity of signs, as referred to in Article 9(1), point 1 of the TMA, is not an independent category, but it serves a purpose, namely the elimination by refusing to register the mark, which would under normal conditions of economic activity to deceive consumers as to the origin of goods. Evaluation of the similarity of the marks must be made at the same time from the perspective of the average consumer of the goods.

Solvay Pharmaceuticals B.V. Decided to file a cassation complaint. The Supreme Administrative Court i its judgment of 13 March 2007, case file II GSK 295/06 ruled that the issue of similarity of trade marks has both the factual and legal aspects, and that the administrative court can conduct its own assessment of the similarity criteria used by the Polish Patent Office. See “Trade mark law, case file II GSK 36/05“.

The SAC noted that according to settled case-law, the similarity of trade marks are resolved on the basis of risk of confusion as to the origin of goods. And the risk of confusion as to the origin of goods consists of similarity of goods and similarity of signs. See “Trade mark law, case file II SA 2778/01“.

Therefore, an essential element of the facts established for purposes of comparison of trade marks in terms of their similarity is to determine what goods bear these marks. Such a requirement does not occur when the same signs lack of similarities that may lead to a risk of confusion as to the origin of goods. This situation occurs in particular when the word trade marks compared in the visual and aural aspect show significant differences, so that mistakes are impossible for the consumer regardless of the way of purchasing terms and conditions of sale. The SAC noted that for unexplained reasons, it was adopted as the basis for comparisons of goods, by how they will be used, based only on arguments provided by Glaxo, where it was not disputed that when the decision was contested before the VAC, no commodity was marked with the questioned sign. It was also important to consider whether the observed similarity in the spelling of the two signs may lead to the risk of confusion. For these reasons, the SAC reversed the contested judgment and referred the case to the VAC for further re-examination.