Menarini v Biofarma: high level of attention to trademark for painkillers

In trademark law, the public’s level of attention is often critical. For instance, when buying luxury products (cars or watches, say), the public generally pays more attention than when making everyday purchases in a supermarket (dishwasher tablets, lighters). This difference in levels of attention means that a risk of confusion is more likely to arise between two brands of dishwasher tablets than if there were a similar conflict between car brands.
But what about the level of attention for painkillers? Is it higher than average because the products are important to our health, or lower because they are everyday products? This was one of the key issues in proceedings between two pharmaceutical companies, Menarini and Biofarma. Menarini had applied for the trademark SKUDEX for painkillers. Biofarma filed an opposition against the trademark application based on its earlier trademark FLUDEX, which had been registered for an antihypertensive. Was there a risk of confusion? The Benelux Office for Intellectual Property (BOIP) assumed there was and accordingly refused to register the Menarini trademark in the trademarks register.

Menarini appealed against this to the Court of Appeal in The Hague and one of its most significant arguments was that the BOIP wrongly assumed that the public’s level of attention would be merely average. The Court of Appeal found in favour of Menarini: the public’s level of attention for painkillers was above average. Painkillers are of course widely available but the public is extra vigilant because these products have an impact on health and making mistakes with drugs can entail risks to health. The decision also balanced out in Menarini’s favour for other reasons. Biofarma’s opposition based on FLUDEX foundered; Menarini’s trademark for SKUDEX was indeed registered.

Menarini was represented in this case by Maarten Haak and Bram Duivenvoorde.

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