Case: Aventis Pharma S.A. v Acorda Therapeutics, Inc.
Drug: AMPRIVA, application No. 1,452,781
Nature of case: Trade-mark Opposition Board Hearing
Successful party: Divided
Date of decision: April 21, 2015
This was a decision of the Trade-marks Opposition Board (TMOB or the Board) respecting the likelihood of confusion between the applicant’s mark AMPRIVA and the opponent’s mark APIDRA®. The Board found that there was a likelihood of confusion between the marks as diabetic patients on APIDRA® could also be prescribed AMPRIVA for diabetic neuropathy. As such, the section 12(1)(d) ground of opposition was allowed in part. The application was also allowed to proceed in part, excluding diabetic neuropathy from the list of diseases subject to treatment.
Acorda Therapeutics, Inc. (Acorda) filed a trade-mark application for the word mark AMPRIVA (application No. 1452781), for use in connection with pharmaceutical preparations for the treatment of various listed neurological diseases, including diabetic neuropathy. Aventis Pharma S.A. (Aventis) opposed the mark on a number of grounds, including registrability, non-entitlement and distinctiveness of the mark. Aventis opposed the mark on the basis that there was a likelihood of confusion with its mark APIDRA®, for use in association with pharmaceutical preparations for the treatment of diabetes.
The main issue in this opposition was the registrability of the AMPRIVA mark under section 12(1)(d) of theTrade-marks Act. The Board summarily dismissed Aventis’ grounds of opposition for non-entitlement and distinctiveness as they had failed to meet the evidentiary burden to support the opposition.
Likelihood of confusion between APIDRA® and AMPRIVA
Aventis opposed the registration of Acorda’s mark AMPRIVA on the basis that a consumer would likely confuse the source of the goods as emanating from Aventis. The Board undertook an analysis of confusion based on the evidence before it. Notably, the applicant, Acorda, did not file any evidence to support the application in the opposition proceeding, but did file a written argument. The Board refused to consider state of the register evidence attached as an Annex to Acorda’s written representations on the basis that it should have been filed as evidence.
With respect to the factors for assessing confusion, the Board focused its analysis on the nature of the goods and channels of trade as between the two marks. Based on affidavit evidence filed by the opponent, the Board concluded that there was a strong possibility that the pharmaceutical preparations could be used to treat the same type of patients, specifically, that diabetic patients taking APIDRA® could suffer from diabetic neuropathy and as such, could be prescribed the applicant’s product AMPRIVA. There was no evidence to link the opponent’s product to the other neurological diseases listed in the applicant’s goods.
The Board also determined that there could be confusion as to the source of the goods based on the degree of resemblance between the marks.
The application for the mark AMPRIVA was allowed in part. The Board required the applicant to remove diabetic neuropathy from the list of diseases in the description of goods.
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