UKIPO rejects Novartis’s TM opposition attempt
Switzerland-based Novartis has failed to convince the UK Intellectual Property Office (IPO) that a trademark applied-for by Boston Healthcare should not be registered.
Yorkshire-based Boston Healthcare’s applied-for trademark ‘Emolite’ covers emollients for medical purposes, skin care lotions for medical purposes and topical preparations for treatment of dry skin conditions in class 5.
In August last year, Boston Healthcare applied to register the trademark but, soon after publication, Novartis opposed it, claiming that the mark was too similar to its ‘Edomige’ trademark, which covers pharmaceutical preparations.
Novartis’ European trademark ‘Edomige’ designated the UK in July 2019, before being granted protection in the UK in November last year.
Earlier this month, Laura Stephens, on behalf of the IPO, concluded that Novartis had failed to prove there was a likelihood of confusion between the marks.
After finding that each of the Boston Healthcare’s goods fell within the scope of the earlier mark’s pharmaceutical preparations, meaning that the goods were identical, Stephens concluded that consumers would pay medium to very high degree of attention when selecting the goods.
“From both a professional and personal perspective, the goods’ selection is therefore likely to command a considerable amount of diligence, with consumers’ health of utmost importance,” said Stephens.
While the IPO found that the visual similarity between the marks was high (given that four of the seven letters are identical, with both marks displayed in uppercase) and that the aural similarity was medium to fairly high, it found that conceptual similarity was lacking.
Boston Healthcare argued that while Novartis’ trademark held no meaning as it was an inventive word, its own trademark clearly refers to a product which is a ‘light emollient’, combining ‘Emo’ or ‘Emol’ (the first 3/4 letters of emollient) and ‘Lite’ or ‘(L)ite’.
Stephens agreed that the average consumer will be unable to attribute a concept to Novartis’ mark but added that Boston Healthcare’s mark would also be viewed as an invented word.
“However, on the basis that consumers will attempt to find a recognisable or tangible concept which they could recall, it seems likely to me that they will turn to Emo and Lite,” Stephens said, before adding that she did not agree that the average consumer will understand the mark to mean a light emollient.
“To my knowledge, neither Emo or Emol is used as a common shortening or abbreviation of emollient, nor do I have sight of any evidence to that effect. I am aware that EMO can refer to a specific style of music but, again, I am not of the view that this will be recognised by the average consumer in this context. I am not, in fact, confident that the average consumer will attribute any concept at all to this element,” she concluded.
Looking at likelihood of confusion, Stephens first turned to indirect confusion, concluding that despite the marks’ visual and aural similarity “being (at least potentially) fairly high, the differences introduced in the later mark are not consistent with an evolutionary brand extension or change in marketing strategy”.
On direct confusion, the IPO said that the level of care adopted by consumers will “steer them from the effects of direct confusion”.
Novartis was ordered to pay £400 ($497). Subject to a successful appeal, Boston Healthcare’s application will proceed to registration.
