Trade mark law, case II GSK 56/10

March 25th, 2011, Tomasz Rychlicki

The Polish Patent Office registered the word trade mark TRIMEGAL R-177593 for Farmaceutyczna Spółdzielnia Pracy GALENA for goods in Class 5 such as pharmaceutical preparations. NOVARTIS AG filed a notice of opposition. The Swiss company claimed TRIMEGAL is similar to its trade mark TRILEPTAL IR-0560245 registered for goods in Class 5 such as pharmaceuticals. The PPO dismissed it. Novartis decided to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 12 August 2009 case file akt VI SA/Wa 581/09 dismissed it, and NOVARTIS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 January 2011 case file II GSK 56/10 held that in the case of the final recipients of pharmaceuticlas that are labeled with TRIMEGAL or TRILEPTAL trade marks it is hard to tell about the existence of likelihood/risk of confusion. The Court noted that it should be remembered that these signs are used for the determination of drugs that are used for different illnesses such as heart disease and epilepsy. Patients who are suffering from such illnesses are deemed according to the SAC as the “aware consumers” of their prescription drugs. Moreover, the so-called “post-sale risk of confusion” can be considered only when the patient with epilepsy, also suffers from heart disease, because only then in his medicine cabinet at home can be found both drugs bearing this two marks in question. The differences between both marks are sufficient to exclude any risk of confusion and to ensure the existence of the two signs on the market without any collision. Therefore, the view that TRIMEGAL is similar to TRILEPTAL in a way that excludes the possibility of distinguishing this two signs, in fact, would limit the possibility to use other trademarks with the informational prefix TRI- (triple).