istock-92036866
14 August 2017Americas

Jazz takes on Novartis over sound of trademark

Jazz Pharmaceuticals has taken issue with a trademark application filed by Novartis in the US, filing an opposition at the Trademark Trial and Appeal Board (TTAB).

Novartis filed its application for the mark ‘Zibitro’ in November last year, covering international class 5, which includes anti-infectives, anti-inflammatories and antibiotics.

The mark, serial number 87/222,187, was published in February 2017.

Ireland-based Jazz filed its opposition to the mark on August 7, claiming it would cause confusion with and dilution of Jazz’s mark ‘Xyrem’.

Xyrem (sodium oxybate) is a drug manufactured by Jazz that is used to treat two common symptoms of narcolepsy: cataplexy (sudden loss of muscle strength) and excessive daytime sleepiness.

Jazz registered ‘Xyrem’ in class 5, along with other classes including 16 (for printed materials concerning medicine) and class 10 (drug delivery devices).

It has also registered marks including ‘Xyrem Patient Success Program’ and ‘Xyrem Careconnect’, both of which are used to cover telephone support services.

“Applicant seeks to register its mark for the same goods, namely pharmaceutical preparations for treatment of disorders of the central nervous system, and for similar goods,” said Jazz in its opposition.

Jazz said it has used the ‘Xyrem’ mark in connection with drug delivery devices since 2003 and for pharmaceutical preparations since 1999.

The ‘Zibitro’ mark is “highly similar” to the ‘Xyrem’ mark, claimed Jazz, explaining that both marks begin with the same sound.

“In addition, applicant’s proposed ‘Zibitro’ mark has an ‘R’, the same as opposer’s ‘Xyrem’ mark. These similarities stimulate recall of and likely confusion with opposer’s well-known ‘Xyrem’ mark,” said the application.

Jazz added that the consequence of any likelihood of confusion is potentially quite serious in the field of pharmaceuticals and medical compositions, because of the “possibly dire results”.

The Ireland-based pharmaceutical company said it has successfully objected to and prevented registration of “several other phonetically and visually similar proposed trademarks”, including ‘Xyvel’ (Bristol-Myers Squibb) and ‘Zymerys’ (Eli Lilly).

Did you enjoy reading this story?  Sign up to our free newsletters and get stories like this sent straight to your inbox.


More on this story

Americas
3 August 2018   Jazz Pharmaceuticals has opposed a US trademark applied for by a nutrition company to cover dietary supplements in class 5.

More on this story

Americas
3 August 2018   Jazz Pharmaceuticals has opposed a US trademark applied for by a nutrition company to cover dietary supplements in class 5.