From a general viewpoint and due to the essential distinctive function of a trademark - to the benefit of both its owner and consumers in general - a sign must be clearly distinguishable from other registered signs. It is unanimous that a trademark's main function is to be distinctive.

When evaluating the likeliness of confusion among trademarks applied to pharmaceutical products, in the past the Argentine courts have long applied wide criteria when comparing trademarks, as it was considered that in these cases consumers are more careful and cautious when purchasing medication, even in the case of over-the-counter products. Taking into account the serious consequences of possible confusion in the pharmaceutical products sector, it was later decided that the criterion for judging the likelihood of confusion should be stricter when such confusion may cause greater harm to health.

In a March 18 2011 judgment in Rodriguez Cadahia v Sanofi Pasteur regarding the cessation of opposition to a trademark registration, the Federal Court of Appeals in Civil and Commercial Matters, Division II, rejected the request for cessation on the grounds that the competing trademarks (FLUVAXIM and AVAXIM) were in the same class and referred specifically to medication.

The court also explained that, under these circumstances, the comparison should be particularly strict as medication dispensed at a drugstore is generally sold by shop assistants without a corresponding medical degree. Therefore, it cannot be assumed that there are two professional controls (ie, the one performed by the physician and that performed by the pharmacist) even in the case of medication available on prescription.

Furthermore, the court held that when emphasising the severity of the comparison due to the fact that it is a matter of pharmaceuticals, it can be concluded that the marks in question have more similarities than differences and thus do not comply with the requirement of being clearly distinguishable.

For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100), fax (+54 11 4311 5675) or email ([email protected]).