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28 November 2018Big Pharma

EUIPO sides with Takeda in trademark appeal

Japan-based Takeda Pharmaceutical has persuaded the European Union Intellectual Property Office (EUIPO) that an applied-for trademark would be confused with its own earlier-registered mark.

The Fourth Board of Appeal delivered its decision on Monday, November 26.

In 2016, Nikken International, a provider of wellness goods such as nutrition products, insoles, and skin creams, applied to register ‘Kenzen’ in classes 5 and 30.

Takeda opposed the mark’s registration for all goods in class 5, which included nutritional supplements, meal replacement bars, and weight management powders.

Takeda’s French trademark ‘Kenzen’ (number 97,698,336) was registered in 1997 and renewed in 2017, for cardiovascular agents in class 5.

The drug Kenzen (candesartan cilexetil) is marketed and prescribed for heart failure and hypertension in France.

At the EUIPO, Takeda submitted invoices and website printouts as evidence of the mark’s use.

In 2018, the Opposition Division upheld the opposition and ordered Nikken to pay the costs of the proceedings.

The Opposition Division said that Takeda had shown genuine use of its mark, and noted that the applied-for mark covered similar products to that of Takeda’s mark.

For example, the goods covered by the applied-for mark are used to improve a patient’s healing process and Takeda’s mark covers goods used to improve a patient’s medical condition.

“They had the same nature and might target the same relevant public, independently of their prescription,” the Opposition Division found.

It added that they may also have the same producer and be distributed via the same channels and, as the two marks are identical, a likelihood of confusion exists.

On appeal, Nikken argued that the decision should be annulled.

Nikken claimed that Takeda had not shown genuine use of its trademark in relation to any goods apart from for a prescription drug to treat hypertension which targets a different public to the goods Nikken’s mark covers.

“The earlier goods are meant for patients and the consumers of the contested goods would not be considered as such,” Nikken said. It added that Takeda’s goods are prescribed by a doctor, whereas its own goods are sold via a completely different trade method (network marketing).

In response, Takeda noted that the trade method of Nikken may change according to the company’s commercial strategy.

The Fourth Board of Appeal said that Nikken’s appeal is “not well founded”.

Although Takeda’s goods fall within the category of “pharmaceutical preparations” and Nikken’s products in that of “other preparations for medical purposes”, the board agreed with the Opposition Division that the conflicting goods are similar.

The board also agreed that both Takeda’s and Nikken’s products can be sold to end-users in pharmacies, irrespective of whether some products (Takeda’s) require a prescription.

“Taking into account the identity of the conflicting signs, the similarity of the conflicting goods and the normal inherent distinctiveness of the earlier mark, there exists a likelihood of confusion,” the board concluded.

The board ordered Nikken to pay Takeda’s costs of €1,170 ($1,320).

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