Monday, March 14, 2011

Pharma trademarks - differing goods in class 5

In early March, the Jakarta Commercial Court rejected Japanese pharma company Eisai's law suit to cancel a trademark registration for STROCAP.   The plaintiff's case was that STROCAP was similar to its earlier registration for STROCAIN. Both marks were registered in class 5 of the international classification covering various health related products.

The judges acknowledged the dominant elements are shared by both marks: the letters S,T,R,O and C. However, the judges said that the two marks are still different both visually and phonetically. They reasoned  that the difference in the last one or two letters render the two marks STROCAP and STROCAIN  "far apart".  The later mark STROCAP will not mislead consumers they said.

The court also ruled that the goods covered by the two marks are not the same, pharma products (plaintiff's registration) and vitamins & mineral supplements (defendant's registration). A common problem given the breadth of class 5. The judges also referred to the following reasoning from a Supreme Court decision to the effect that: Class 5 goods are usually purchased with doctor's prescriptions or because consumers will be served by professional pharmacists who are knowledgeable in distinguishing these goods. 

The ruling seems to suggest that the court will take into account the context of health care/ medicinal products in class 5 for which consumers are guided by well informed professionals and confusion would therefore be avoided. This issue is commonly found in other countries. In the Philippines for example a similar rationale is often argued. But the converse argument is that the dangers of confusion are so great with such products that extra caution should be taken and confusion tests should not be to narrow.

Class 5 arguments like this are common around the world (like class 9), and suggest a Nice Classification change ought to be made at some point.

The plaintiff said that they intend to appeal; this may not be the last word on this subject.

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