Sanofi-aventis loses ECJ trademark case

The European Court of Justice (ECJ) has ruled against a claim by sanofi-aventis that the brand name of a product marketed by another pharma company is too similar to the name of one of its drugs.

The ECJ court of the first instance confirmed an earlier decision by the office for harmonisation in the internal market (trademarks and designs) (OHIM). In 2006, OHIM had rejected an appeal by sanofi-aventis in a case against US company Searle -now part of Pfizer.

In 2000, Searle filed a community trademark request for Aturion, a cardiovascular medicinal product. A year later, the French group sanofi-synthelabo, now sanofi-aventis, lodged an appeal with OHIM, claiming the name Aturion was too close to the name Urion (alfuzosine). Urion is used to treat benign prostatic hyperplasia and was filed in 1988.

It may be that Searle subsequently decided against launching its product under the name Aturion since there is no trace of a medicinal product marketed under this name in France.

Sanofi-aventis argued that the two brand names are visually similar as they are written practically identically, and sound almost the same. OHIM rejected this and stated there was no risk of confusion between the two brands. The French group took the matter to the EC court of first instance.

The court noted that the two products are of the same type (pharmaceutical products) and have the same purpose (treating health problems), are aimed at the same consumers (health professionals and patients) and use the same distribution channels (pharmacies). However, it emphasised that they are not the same because their main therapeutic indication is different.

Furthermore, the court considered that the names in conflict cannot be considered similar by the relevant population groups, in this case, health professionals and patients. The court considers the relevant population group to have both above-average awareness and an ability to discriminate.

Furthermore, the risk of confusion exists when the public might believe the products involved come from the same company, or from companies that are economically related. The magistrates considered that such risk did not apply in this case.

In a ruling issued in November 2005, in a similar case relating to Bausch & Lomb's ophthalmic treatment Alrex (loteprednol) and Biofarma's cardiovascular treatment Artex (tertatolol), the European magistrates had reached a different conclusion.

They had considered that the strong resemblance in the brand names of these two medicinal products did entail a risk of confusion for patients, despite the fact that the therapeutic indications were totally different.