Top Articles

In Alcon Inc v Of Office for Harmonisation in the Internal Market (OHIM) [2005], a mark was refused registration because the public was likely to confuse the

According to USFDA, a combination product is one composed of any combination of a drug and device; biological product and device; drug and biological product

mark with another similar mark.

In 1998, Alcon filed an application for registration of the word mark TRAVATAN in respect of goods within Class 5, in particu

; or drug, device, and biological product and fixed dose combination would include two or more combinations of drug.

Examples of combination products may in

lar ophthalmic pharmaceutical preparations.

In 1999, Biofarma SA filed an opposition against registration of TRAVATAN, arguing that there would be confusion

lude drug-coated devices, drugs packaged with delivery devices in medical kits, and drugs and devices packaged separately but intended to be used together.

with the word mark TRIVASTAN, registered in Italy in 1986. This earlier trade mark was also registered under Class 5 covering pharmaceutical, veterinary, hyg

here is enormous increase in the number of combination products entering the market in the recent years. Combination products have proven advantages but fixe

ene products and others.

In compliance with Article 42 of Regulation No 40/94, Alcon requested that Biofarma furnish proof that the TRIVASTAN mark been put t

d dose combinations are still in the process of convincing regulatory authority on their advantages over the single ingredient formulations.

Combination pro

o genuine use in Italy. Biofarma sent the requested documents to OHIM, demonstrating genuine use of TRIVASTAN in Italy.

In September 2001, the Opposition Di

ucts have become life saving products for the pharmaceutical companies who doesn’t have many innovative molecules in their product pipeline and have been inc

vision of OHIM found that use of TRIVASTAN was proven in respect of a pharmaceutical product within Class 5. The Opposition Division therefore refused regist

easingly used in the product life cycle management. Even the companies having product patents are trying to extend their product life cycle through the combi

ation of TRAVATAN on the grounds that there was likely to be confusion because of the visual and phonetic similarities between the marks. Alcon appealed this

nation products and maximize the revenues. But the companies involved in this practice are overlooking that they are burdening the patients both economically

decision to the Third Board of Appeal who also rejected the appeal on the same grounds as the Opposition Division. Alcon then applied to the Court of First

and physically. They need to rightly judge the benefits of the combination products and they have to even look at the risks involved when combining the produ

Instance to annul the decision.

Alcon claimed that:-

▪ Article 42(2) and (3) had been infringed because Biofarma failed to submit evidence of actual

ts. Some of the combination products were well accepted by physicians while others suffered. Companies involved in development of combination products are fi

use rather than potential use of TRIVASTAN in respect of ophthalmic products; and

▪ there has been an infringement of Article 8(1)(b) because the good

ding difficulty in defining their combination products and facing various challenges from selecting a combination to marketing it.

Following aspects would a

s at issue were not sufficiently similar.

The Court of First Instance ruled that:-

▪ the evidence submitted by Biofarma demonstrated genuine use of

dd to the challenges in developing combination products:

Which markets to tap where the combination products can do fairly well?
Which combination prod

TRIVASTAN was in respect of a medicinal product to treat vascular disorders of the eye, and it would be superfluous to require proof that the product was actu

cts are meaningful and rational?
Which therapeutic categories to select?
Which Combinations can address unmet needs of the patients?
Do combin

ally used by patients for this purpose;

▪ a likelihood of confusion results if the public might believe that the goods or services in question come fr

tions increase the patient compliance?
What would be the developing cost?
How to tackle the risks encountered during combination product developmen

m the same company;

▪ a likelihood of confusion is assessed based upon the perception of the public of the marks and goods and services in question; a

t?

As combination products don't fit into the traditional categories of drugs, medical devices, or biological products, the USFDA is in the process of devel

nd

▪ the signs in question were visually and phonetically similar and there was a high degree of similarity between the products which would result in

ping new procedures for reviewing their safety, efficacy and quality.

Professional from academic institutions, pharmaceutical industries, health care indust

a likelihood of confusion.

The application was therefore dismissed.

Comment: Ensure that a sought trade mark will not be confused with another mark in rega

y and representatives from various regulatory agencies are working out to design the regulatory requirements for manufacture and sale of combination products

ds to the type of product or actual mark.

Email: enquiries@rtcoopers.com

© RT COOPERS, 2006. This Briefing Note does not provide a comprehensive or complete

.

As there is an increasing trend of the combination products companies manufacturing such products should be able to tackle the problems involved in the de

statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal

elopment. They need to be wiser in analyzing the market trends and the regulatory requirements.

Companies that provide selfless information through particip

advice should always be sought in relation to particular circumstances.

For help with registering your trade mark please contact us at enquiries@rtcoopers.co

tion in industry events and feedback to regulatory authorities would be able to face the challenges and will be successful in developing combination products

HTTP = HTML link (for blogs, profiles,phorums):
<a href="http://www.toparticles.org.ua/article/130168/toparticles-Intellectual-Property-Community-Trade-Marks--Registration-Refusal--Likelihood-of-Confusion.html">Intellectual Property: Community Trade Marks – Registration Refusal – Likelihood of Confusion</a>

BB link (for phorums):
[url=http://www.toparticles.org.ua/article/130168/toparticles-Intellectual-Property-Community-Trade-Marks--Registration-Refusal--Likelihood-of-Confusion.html]Intellectual Property: Community Trade Marks – Registration Refusal – Likelihood of Confusion[/url]

When designing a business card, it's essential that it's clear, concise and right to the point. Of the factors that make an effective business card, the least exciting one-clarity. However, it's also the most fundamental of the factors. To see why, imagine this case. An architecture firm designs a business card for their services, and does a good job of making cards ...

We could all use more advice when it comes to our income and expenses. There are times when it's just difficult to manage our money well. All of us have things that we want in life. It's not like we can simply pay the monthly bills and be completely satisfied. We just don’t function that way.

There are many misconceptions about long term care insurance(LTCi), and one of the notions that is often at odds with reality is that the person who receives care from the policy will benefit most from it. Of course, if a person is single and has no other family or friends to help provide care in the event that a long term illness should arise, then no doubt they will benefit most from the policy.

Tags

Links

Top Articles - Intellectual Property: Community Trade Marks – Registration Refusal – Likelihood of Confusion

Related Articles: