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Photo: Courtesy of Teva
2 February 2017Big Pharma

Teva successful in General Court TM dispute

Teva has secured a victory at the EU General Court against healthcare company Opko Ireland Global.

In 2005, Ineos Healthcare, the predecessor to Opko, applied to register a European Union trademark (EUTM) for ‘Alpharen’ for class 5.

The following year, Teva filed a notice of opposition based on three earlier trademarks: the Hungarian word mark ‘Alpha D3’, the Lithuanian word mark ‘Alpha D3’and the Latvian word mark ‘Alpha D3’.

Each of the Teva marks was designated to class 5, corresponding to “pharmaceutical preparation being a calcium regulator”.

In 2007, the European Union Intellectual Property Office’s (EUIPO) Opposition Division upheld the opposition in its entirety, based on the earlier Hungarian trademark. Ineos appealed.

The EUIPO’s Second Board of Appeal dismissed the appeal in 2009.

Examining the Latvian and Lithuanian trademarks, it observed that the signs showed a “certain degree of visual, phonetic and conceptual similarity”.

Ineos brought an action before the General Court against the decision, and the court upheld the action in part and annulled the decision of 2009. The case was remitted to the First Board of Appeal.

In February 2015, the EUTM application was transferred to Opko.

A series of decisions followed, culminating in the Fifth Board of Appeal dismissing an appeal by Opko in December 2015. The board considered there was a likelihood of confusion between the marks at issue for certain categories of goods.

In its appeal to the General Court, Opko raised four pleas, including disputing the findings of the board relating to the existence of a likelihood of confusion between the marks at issue.

Opko disputed the findings relating to the relevant public and its level of attention, and the similarity of the signs.

The board had considered that the public was comprised of Latvian and Lithuanian health professionals and average consumers.

Opko complained that the relevant public included average consumers not having the same level of attention as professionals, but the court disagreed.

“It must be pointed out that the applicant’s assertions are based on the incorrect premise that the similarity of the goods in question has not been proved,” said the court.

The court added that the board was correct to hold that there was a likelihood of confusion between the marks in question on the “part of average Latvian and Lithuanian consumers with a high level of attention”.

Opko’s appeal was dismissed and the company was ordered to pay costs.

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