It is usual that pharmaceutical trademarks contain commonly used terms, so they are formed by the combination of elements such as prefixes, suffixes or commonly used words that evoke somehow an idea about the properties of the product, its active principles, and its therapeutic function. They also may refer to a component of the medicine or the organ for which they are prescribed.
Terms are considered commonly used for two reasons: either for being part of the several marks or for being evocative of the product or any of its features. By common usage anyone is free to include them in a mark, provided that it is not confused with other marks of other owners.
For example, a prefix commonly used in Class 5 is the prefix CORTI that evoke the active substance corticosteroid or the word “cortisone”. The prefix CORTI is present in the formation of numerous registered trademarks owned by different owners, such as: CORTIFLEX, CORTIDERM 10, CORTIMED, CORTICREM, CORTIFENOL1, etc.
The Court of Justice of the Andean Community has established in a precedent that the prefixes, suffixes, roots or endings commonly used in the marks cannot be subject to monopoly or exclusive use of a single person since they are usual words which its use by the general public can’t be prohibited.
Usually it is argued that because the signs identify products that directly affect health and have consequences on the human body, the consumer will have a higher level of attention and special care when purchasing the pharmaceutical products. This has been recognized in diverse jurisprudence of INDECOPI where stated that "in the case of pharmaceuticals referred to the signs in question, it is reasonable to assume that the consumer, when purchasing such products, would make a close examination based on their needs"1.
However this is not enough to dismiss the risk of confusion because in the pharmaceutical trademarks that share commonly used terms, whose names could prove to be very similar, the consumers themselves might be induced to confusion, i.e., it may acquire a product in the belief that it is purchasing another, which is known as direct confusion or might think that the product has a distinct commercial origin than the real one, what is called indirect confusion.
The Court of Justice of the Andean Community in the Process 08-IP-2013 has noted that:
“What comes to protecting, by avoiding trademark confusion, is the health of the consumer who for confusion when asking for a product and negligence of the dispatcher, he may receive one with similar phonetic but different composition and purpose. If the requested product is intended for flu treatment and the delivered one is for the amebatic treatment, the consequences for the consumer can be dire.We must consider that what has been dominating in our countries is the culture of the ‘personal healing’, according to which a large number of patients self-medicate because they have heard about a product in advertisement or received an indication from a third person. It is not considered that every human body has a different reaction to the same drug, and the self-medication can lead to misleading or confusion at the time of acquisition because the similarity between the two signs."
This approach has been reiterated in several sentences of the Andean Court, such as the Process 30-IP-2000, where is stated:
"This Court is inclined to the thesis that when regarding pharmaceutical trademarks, the examination of confusing similarity should have a more exhaustive study and analysis, avoiding the registration of trademarks whose names has a close similarity to avoid precisely the consumer requests a product instead of another, which in certain circumstances can cause irreparable damage to human health, especially when in many establishments, even drugs of delicate use, are dispended without a prescription and only with just the advice of the pharmacist on duty”.
Also in Process No. 68-IP-2001, the same rigorosity was followed for the comparison between signs in the examination of confusing similarity, concluding that:
"In respect to pharmaceutical products, it is very important determine their nature, since some of them correspond to products of delicate application, which can cause irreparable damage to consumer health. Therefore, the recommendation in these cases is to apply, a rigorous approach in the analysis of the opposing marks that seeks to prevent any confusion in the consuming public because of the nature of the products identified with them."
These arguments are based on the fact that the average consumer is not usually a specialist in chemicals and pharmaceutical issues and the acquisition and use of these products will usually lack of a permanent professional assistance.
The fact that the Specialized Chamber in Intellectual Property of INDECOPI considers that when dealing with pharmaceutical products, the consumer will take a decision following a careful consideration based on his/her needs, that is, that he or she will pay more attention when purchasing these products, doesn´t mean that there isn´t a possibility of confusion, even more if we put ourselves in the place of an average consumer, who doesn´t necessarily have knowledge of the components or properties of pharmaceutical products offered in the market, so he or she can easily fall into confusion when buying such products, in that sense, the consumer could buy in the drugstore a pharmaceutical product in the belief that he or she is buying another product, certainly because the phonetic similarities between the signs are so strong that lead to confusion and do not allow him/her to differentiate a product from another. In this case, not only the consumer would fall into confusion but also the same pharmacist, who may be confused by dispensing one product for another, precisely because of the phonetic and / or visual similarities between the marks.
An example of this is illustrated by the case of the application of the word mark "CORTIDEX". This mark was applied by Inversiones Awl S.A.C. to distinguish pharmaceutical and veterinary products; etc. in Class 5 of the International Classification. Against this application, Laboratorios Chile S.A. files an opposition based on the ownership of the mark CORTIPREX that distinguishes products of class 5. In the opposition, Laboratorios Chile S.A. indicates that from the graphic and phonetic point of view, the marks are very similar because they share the word CORTI, and this term will be more easily remembered by the consumer public.
The Commission of Distinctive Signs, by Resolution No. 1085-2009/CSD-INDECOPI, declared unfounded the opposition and consequently granted the registration of the mark applied, stating that from the graphic and phonetic point of view the signs have a different sequence of consonants (C-R-T-D-X / C-R-T-P-R-X), thus they also differ in their final syllables (DEX / PREX), which determines that said signs generate a different pronunciation and a different overall visual impression. It is noted that the fact that the signs share the particle CORTI, this is not decisive to establish some kind of similarity between them, since this particle is part of the conformation of various registered trademarks in class 5.
By Resolution No. 0107-2010/TPI-INDECOPI, the Specialized Chamber in Intellectual Property confirms the first instance decision stating that "the initial particle CORTI present in the signs may refer to the term cortisone, which explains its frequent use in the conformation of registered marks in class 5 of the International Classification, as shown in the background Report. In this sense, it can hardly indicate a particular commercial origin".
From our point of view the marks CORTIDEX and CORTIPREX themselves are confusingly similar, because in addition to distinguish some of the same products, from a graphic and phonetic point of view, the marks are similar since they share the prefix CORTI, which significantly affects the appearance of the opposing marks, even more taking into account that they share the same ending (EX) and the same sequence of vowels (O-I-E), generating a sound and a visual impact very similar, so this could lead to consumer confusion.
It is therefore very important that pharmaceutical trademarks have additional elements added to the common term, whether figurative or verbal, with sufficient distinctiveness to identify and distinguish the commercial origin of the product to avoid the risk of confusion, as also prevent the sign to become descriptive because that would make it not distinctive and therefore in consideration of the prohibition of registration of the Article 135 subparagraph e) of Decision 486 from the Andean Community which would make impossible their protection, but mainly because we must safeguard the health and life of the consumers, fundamental rights that are superior to any intellectual property registration.