Confusion with INNs under German jurisdiction

von David Slopek

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 ...

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