CONFUSING SIMILARITY AND A TALE OF TWO DRUGS

By David Opijah,John Syekei Tuesday, June 19, 2018
  • SHARE THIS ARTICLE

In Kenya, certain trademark issues around prescription-only medicines have been clarified following a registrar of trademarks ruling where the parties were at odds over the likelihood of trademark confusion.

The applicant was Cipla Kenya Limited and the respondent was ViiV Healthcare UK Limited. The cause of contention between them was Cipla Kenya’s successful application to the registrar of trademarks to register the word mark EFAVIR for its pharmaceutical products used in the treatment of HIV/AIDS. ViiV Healthcare argued that EFAVIR was confusingly similar to the name of its own word mark EPIVIR.

The disagreement arose after the registrar of trademarks approved Cipla’s application to register EFAVIR and this was published in the Kenya Industrial Property Journal of February 28 2014. Following publication, ViiV Healthcare filed a notice of opposition to the registration of the mark.

The main ground of the opposition was that the applicant’s EFAVIR mark was similar to the respondent’s EPIVIR mark and was likely to mislead consumers.

Prescription drugs

The applicant filed a counter-argument refuting the allegations. Cipla Kenya stated that the only similarity between the two marks was the suffix ‘vir’, which is common in trademarks for use in pharmaceutical products in Class 5. The applicant intimated that both products were prescription drugs sold by medical experts who would know that they contained different ingredients and as such would not confuse the two drugs.

The main issue for the registrar to determine was whether EFAVIR was so similar to EPIVIR that it would cause confusion and that this would be contrary to the provisions of Section 15(1) of the Trademarks Act Cap 506, which prohibits the registration of identical or similar trademarks.

The registrar agreed with Cipla Kenya that the suffix ‘vir’ is common in pharmaceutical products. Marks bearing this suffix are generally accepted for registration, provided that the relevant mark is combined with another distinctive element. In light of the above, the registrar held that the two marks were not similar in appearance and suggestion, as the prefix ‘efa’ in the applicant’s trademark was distinct from the prefix ‘epi’. The registrar held this to be adequate to distinguish Cipla Kenya’s pharmaceutical products from those of ViiV Healthcare.

Finally, the registrar stated that as both products had co-existed in the market for over 16 years without any evidence of confusion, there was no likelihood of confusion in the future.

The applicant’s EFAVIR mark was therefore allowed to proceed to registration.

Decision

This decision is helpful to the pharmaceutical industry in Kenya. Notably, only medical professionals such as pharmacists may dispense prescription drugs, which minimises the likelihood that trademarks of prescription-only pharmaceutical products could be confused. Medical professionals would be aware of the ingredients of each drug and as such would not confuse the two drugs.

This decision attempts to clarify what the registrar would consider to be a confusing similarity of marks in Class 5. It also attempts to clarify the relevant class of persons who should be considered when assessing the likelihood of confusion of Class 5 marks in Kenya. This ruling will be of interest to the pharmaceutical industry in general and to companies which do, or intend to do, such business in Kenya.