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The EMEA Single
Trade Mark Requirement
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| This is
a briefing note for trade mark attorneys working for
clients in the pharmaceutical industry |
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The European
Medicines Evaluation Agency (also called the European
Agency for the Evaluation of Medical Products) and is
the EU Commission agency for approving a new pharmaceutical
for use throughout the whole of the EU. |
| Any company which
wants approval from the EMEA for its product must submit
the trade mark it wants to use for that product to the
EMEA and the EME must decide if it conflicts with a
name of a product which has already been approved by
the EMEA or one of the national pharmaceutical regulatory
agencies in any of the EU Member States. If there is
a conflict, then the EMEA will refuse the new name for
the whole of the EU (an equivalent to OHIM refusing
a Community trade mark application for the whole of
the EU). The analogy with OHIM however is not a perfect
one as there are three differences: |
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Consent /co existence
with the owner of the other mark will not be enough
to deal with the EMEA concern |
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There is no "conversion"
- the EMEA will not usually permit a different mark
to be substituted to overcome the conflict in the affected
country. Even then, it will do so only if there is clear
evidence that there is an insurmountable problem |
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The test for confusion
is not performed by trade mark lawyers and the persons
who make the assessment have their own, quite different,
approach. It has come to be called the "three letter
rule". It is not universally applied by the EMEA
to all cases, and it is hard to see any pattern to the
times it is applied from the times it is not. The best
rule of thumb therefore when searching trade mark registrations
to assess if a new mark is free for use for a pharmaceutical
product is to stick to the usual Sabel
v Puma test for overall impression but to be
aware that |
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The EMEA will not take into account a mark's descriptiveness
in assessing confusion with another mark (with the effect
that whilst the chances of an action for trade mark
infringement are low, the EMEA can still refuse the
mark)
An element which appears
to be common because it is contained in so many marks
may not in practice be commonly used for the particular
indication for which approval of the mark is being
sought
If your search reveals
marks which are less than three letters different,
the letters which are common to both marks are in
the same position, point the mark out to the client
even if you believe that there is no overall impression
according to Sabel v
Puma
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| www.emea.eu.int
(pdf) |
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