Registering a trademark with the Trademark Office is insufficient to guarantee its use for a pharmaceutical product, as the Health Authority must accept the name of the medicament at the time of issuance of the required marketing and sales authorisation (for further details please see "Trademarks and pharmaceutical products – an overview"). Further, Argentine law does not contain specific rules on the risk of confusion regarding pharmaceutical product trademarks and legal commentators and case law provide opposing views of whether common or stricter criteria should be applied when assessing the likelihood of confusion.
In this context, the most recent judicial decisions recognise that each particular case should be analysed separately in order to determine which criteria should be applied.
In Química Montpellier SA v Investi Farma SA – which concerned an opposition to the registration of a trademark in Class 5 (pharmaceutical products) – Division 1 of the Federal Court of Appeals in Civil and Commercial Matters reaffirmed its previous position that it is inappropriate to follow rigid or restrictive criteria when assessing the likelihood of confusion between pharmaceutical trademarks; instead, the particular circumstances of each case must be considered.
In its ruling, the court explained, by citing previous decisions, that:
"This Division has repeatedly stated that regarding conflicting trademarks in Class 5 of the nomenclature, it is not appropriate to follow rigid or especially restrictive guidelines, but instead the concrete distinctive features of the species should be observed, following a detailed reasoning regarding the group of aspects that make up the conflict. Certainly, a revision should be made of the scope of the trademarks that have been applied for and granted, the impact of the possible coexistence of the opposing signs on the consumer public, depending on the special characteristics of this public, as well as other reasons of general interest that affect the spirit of trademark laws."
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For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100) or email ([email protected]). The Obligado & Cia website can be accessed at www.obligado.com.