Strict Criterion Should Not Be Applied when Comparing Trademarks for Pharmaceutical Products

Division 1 of the Court of Appeals on Civil and Commercial Matters decided on two cases involving actions to lift oppositions against the registration of trademarks in class 5, which includes pharmaceutical products (“Laboratorios Casasco S.A.I.C. v. Roemmers S.A.”, Case No. 245/2015, September 13, 2016, and “Química Montpellier S.A. v. Investi Farma S.A.”, Case No. 440/2013, Setpember 9, 2016).

The first case involved the opposition filed by Roemmers S.A. to the registration of trademark “INSIT” in class 5 by Laboratorios Casasco S.A. based on its trademark “ISNAT”. The court of first instance held that the case required the application of a realistic and particularly severe criterion, concluded that the trademarks were unnusually similar, and dismissed Laboratorios Casasco S.A.I.C.’s claim.

The second case dealt with Investi Farma S.A.’s opposition against the registration by Química Montpellier S.A. of trademark “ISIGEL” in class 5 based on its trademark “ISIS”. The court of first instance dismissed the claimant’s action, emphasizing that the circumstances of the case could not overcome the similarity between the trademarks.

The Court of Appeals overturned both decisions and dismissed the oppositions to the trademarks. When so deciding, it stated that a view which took into account the circumstances of each case, rather than a particularly rigid or restrictive criterion, should be used when comparing trademarks in class 5. Hence, the Court of Appeals stressed the importance of taking into account the circumstances surrounding the case when comparing trademarks and of assessing the potential impact of the co-existence of the trademarks on consumers.