Is the BLA Creating a Grey Area?

Confusing similarity issues are easily resolved, what with the IP Code instituting Dominancy Test as the heuristic to determine confusing similarity (or so as ruled by the High Court in 2004), which simplifies analysis by dwelling only on the similarities in the dominant features of the contending marks. As to what is “dominant”, there is a wealth of precedents and they usually involve simple, common sense rules (such as prefixes usually treated as the dominant features because they are the first to be read and therefore, the one that imprint in the mind of the consumer).

And these rules also clearly delineate what are the cases where confusing similarity is held remote. A prime example is where the goods covered by the contending marks involve medicine/pharmaceutical products. Here, the no-confusion rule is based on this reasoning:

The medicinal preparation clothed with the trademarks in question, are unlike articles of everyday use such as candies, ice cream, milk, soft drinks and the like which may be freely obtained by anyone, anytime, anywhere. Petitioner’s and respondent’s products are to be dispensed upon medical prescription. The respective labels say so. An intending buyer must have to go first to a licensed doctor of medicine; he receives instructions as to what to purchase; he reads the doctor’s prescription; he knows what he is to buy. He is not of the incautious, unwary, unobservant or unsuspecting type; he examines the product sold to him; he checks to find out whether it conforms to the medical prescription. The common trade channel is the pharmacy or the drugstore. Similarly, the pharmacist or druggist verifies the medicine sold. The margin of error in the acquisition of one for the other is quite remote.

This rule applies to non-prescriptive medicines as well:

We concede the possibility that buyers might be able to obtain PERTUSSIN or ATTUSIN without prescription. When this happens, then the buyer must be one thoroughly familiar with what he intends to get, else he would not have the temerity to ask for a medicine — specifically needed to cure a given ailment. In which case, the more improbable it will be to palm off one for the other. For a person who purchases with open eyes is hardly the man to be deceived.

One would think that with this rule, a dispute would be mechanically resolved even before it rears its head, but this is not the case, – not at all when the agency that is at the forefront to apply precedents, thinks differently, and has in fact ruled differently.

For instance, in just the month of May 2014, in several recent rulings, the BLA sustained confusing similarity opposition notwithstanding the fact that the contending marks are used on goods in connection with medicine: in Natrapharm Inc. vs. Zuneca Inc. (14-2010-00025), which involved ZYNAPSE and ZYNAD; and Alphapharm, Inc. vs. Merck Kgaa (IPC No. 14-2009-00106), which involved ALPHAPHARM and ALPHARMA.

In the following cases, the confusing similarity oppositions were dismissed, but not because they involved medicines: in United Laboratories, Inc. vs. The Cathay YSS Distributors Company, Inc. (14-2010-00245), which involved PLATZ and KLAZ, for the reason that the marks are visually and aurally different; and United Laboratories, Inc. V. Reach Med Pharma (IPC No. 14-2011-00137), which involved COLDEZENT and COLDEASE, invoking several grounds, from descriptiveness defects (COLD- element describes the products), to visual and aural dissimilarity in the remaining syllables (-EZENT different from -EASE), to procedural estoppel on the part of one of the parties.

This is not the first time that the BLA has skirted Supreme Court precedents. But this is not to say that things are turning for the worse. A better rule than the no-confusion principle is the one enunciated by McCarthy, and what the BLA is doing is bringing us closer to this one. He wrote:

If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations.

In this sense, Supreme Court precedents expose us to that disastrous effect. The no-confusion rule simply because patients ingesting medicine are believed to be more careful in choosing their brands, ignores that however careful that choice is made, missteps are bound to occur now and then, and when that happens, the effect is on the patient’s life and limb. It ignores reality in the schools of medicine where one of the subjects taught is pharmacovigilance, which admits that medication errors and switching of drugs do occur.

The BLA however should not just refuse to mechanically apply the no-confusion rule when faced with marks used on medicine. It should also decide cases with a view to protect the medicine-ingesting patient. This means that a slight probability of confusing similarity is nothing more but to admit the possibility of one or two likelihood of medicine switching, but that should be enough injury to declare the marks confusingly similar.



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