Particularly in the pharmaceutical sector it is common to form trade marks from descriptive terms, especially from international non-proprietary names (INNs). One advantage of such trade marks is the easier linkage for users to the medication‘s field of application. But INNs are excluded from trade mark protection because they are merely descriptive and as such not distinctive. Under German jurisdiction, however, only small changes to the INN make it a registrable sign. For example, Roximycin was accepted as a trade mark, where the INN is Roxythromycin.
At the same time these trade marks only have a limited scope of protection under German case law. According to settled case law, the likelihood of confusion is greater, the greater the distinctive character of the prior trade mark. This means at the same time that trade marks inspired by descriptive elements only have a narrow scope of protection. For example, the German Patent Court rejected likelihood of confusion of the marks PANTOPREM and PANTOPAN (decision of 16 January 2014, 25 W (pat) 72/12). The court held that PANTO as the opposing mark’s beginning syllable refers to pantoprazole, a proton pump inhibitor active ingredient mainly used in gastrointestinal preparations. This would also be recognized by the relevant public. The presumption is that attention would not mainly be placed on the mark’s beginning, but particularly also on the additional word components or endings. In the case at issue, differences of the compared marks within the endings in aural and typographical overall impressions would not go unnoticed.
That does not mean however, that any reference to INNs automatically leads to a lower than average distinctiveness of the mark and therefore a reduced scope of protection, as shown by the following decisions by the German Patent Court. The court had to determine the level of distinctiveness of the opposing mark DORZOTIM. It was determined that an abbreviation of the INN Dorzolamid could be seen in the part DORZO, and an abbreviation of the INN Timolol could be seen in the part TIM. This however did not result in the presumption of an inherent weak (below-average) distinctiveness. The disputed mark was said to combine a new artificial word in combining the abbreviations of two INNs, giving it a normal level of distinctiveness (decision of 23 January 2014, 30 W (pat) 90/13 – DORZOTIM confusingly similar to Dorotim-Ophtal).
In another decision, the German Patent Court decided on the distinctiveness of the opposing mark VERAMEX. Here too, the court certified that the opposing mark had an average level of distinctiveness.The word element VERA was in fact descriptive of the INN Verapamil for the relevant public. In case of slight references to INNs, the German Federal Supreme Court had affirmed a below-average level of distinctiveness. A decreased scope of protection would however only be considered if the unhindered use of the INN or a similar term has to be guaranteed. Such term would have to be kept free for certain reasons. If the descriptive part was combined, as in the case at issue, with a non-descriptive part relating to a fantasy term, nothing would stand in the way of assuming above-average distinctiveness. Therefore, the court held that the word combination VERAMEX overall was an imaginative word formation, which was given average distinctiveness by itself (Decision of 17 September 2014, 29 W (pat) 117/12 – VERAMEX confusingly similar to Besamex for part of the goods).
Trade mark owners must be clear that although such descriptive marks are attractive, enforcement may turn out to be difficult. The rule of thumb is that the greater the deviation from the actual INN, whether through abbreviation or combination with other word elements, the higher the level of distinctiveness.
