Common prefixes do not necessarily establish deceptive similarity, as illustrated in the recent ATMO decision of Abbott Biologicals BV v Novartis AG [2014] ATMO 60 (26 June 2014): Click here to read case. 

Abbott Biologicals opposed an application filed by Novartis AG for the mark INFLUGARD.

In support of the opposition, Abbott Biologicals relied on evidence of its own prior INFLUVAC trade mark registrations.

It also argued that its INFLUVAC trade mark had existed since at least 2010 and before the priority date of the INFLUGARD application, and that the reputation of its INFLUVAC trade mark was such that use of INFLUGARD would be likely to deceive or cause confusion.

In answer, Novartis outlined its INFLUPAN trade mark and its INNOFLU trade mark. It also referred to third party’s INFLU- trade mark registrations, INFLUON and INFLUCOL. Novartis’ representative tendered evidence of 27 pending and registered trade marks in Class 5 which contained the elements “IN” and “FLU” as part words, 23 of which covered pharmaceutical preparations, and 10 of which specifically covered vaccines.

The Hearings Officer concluded that the reputation ground “fail[ed] at the first hurdle”. The Opponent’s evidence was scant on the question of reputation of its INFLUVAC mark. It had not tendered evidence of use, sales or advertising figures, nor evidence of reputation such as market or customer surveys.

The Hearings Officer found that the marks in issue were sufficiently dissimilar. She agreed with the Applicant that INFLU- connotes “influenza” so was a common prefix. The suffixes -vac and -gard, though somewhat descriptive in themselves, resulted in INFLUVAC and INFLUGARD being sufficiently distinguishable. This was particularly so in the context of other coexisting trade marks on the Register having the INFLU- prefix in respect of similar goods, as well as multiple co-existing registrations incorporating the “FLU-” prefix.

Further, the relevant consumers were medical professionals who take time and care with products that they administer or prescribe. This mitigated against any confusion.

Costs were awarded against the Opponent, as it had failed to make out either ground.

The case confirms that common word prefixes will not necessarily result in a finding of deceptive similarity.