Gadovist vs Gadogita – use INN stem

The use of INN stems in trademarks has caused quite a stir. The World health Organization has issued a memo in 2011 on the use thereof. It is desirable that manufacturers do not base their trademark on INNs and that INNs are not used in trademarks. Because this is merely a recommendation, many countries did not include this in their legislation. The consequence of this is that manufacturers are trying to find the limit of what is allowed. Trademarks are often composed of an INN (or variation on it) in combination with another word that may refer to application, for example. The question is what the extent of trademark protection is for such names.

 

Bayer registered the name Gadovist for radiological contrast products. When Agfa Healthcare Imaging Agents files the trademark GadoGita for the same goods Bayer starts an opposition. The beginning of the trademarks GADO refers to gadolinium, the chemical solution used in contrast products. Policy is that the used stems are descriptive so that many comparable trademarks may coexist.


The Swiss authorities decided differently, however. Many contrast products on the basis of gadolinium are sold under different trademarks (without the element GADO). It is therefore no certain fact that GADO stands for ‘gadolinium’. Consequence is that the trademarks are deemed similar and the opposition is granted. Whether this will be the new standard in such cases remains to be seen.

When assessing a trademark’s descriptiveness one should also take future use into account. The decision therefore seems to be drawn a bit too easy. (Source image: Bayer)

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?