Trademark Law and Confusion: A Look at the EMOLITE Case
In a recent UK Intellectual Property Office (UK IPO) decision, the case of Boston Healthcare Ltd v Novartis AG (O/322/20) provided further clarity on how trademark similarity is assessed in cases involving pharmaceuticals and medical products. This case emphasizes the high level of attention required by consumers when selecting pharmaceutical goods and highlights when a mere coincidence of letters is insufficient to establish trademark confusion.
Case Overview
In August 2019, Boston Healthcare Ltd (the Applicant) applied to register the trademark EMOLITE in the UK for "emollients for medical purposes; skin care lotions for medical purposes and topical preparations for the treatment of dry skin conditions" in class 5. Novartis AG (the Opponent) challenged the application under Section 5(2)(b) of the Trade Marks Act 1994, claiming that the similarity between EMOLITE and its earlier trademark, EDOMIDGE, could lead to consumer confusion. Novartis’s EDOMIDGE mark was internationally registered and covered "pharmaceutical preparations" in class 5.
Similarity and Goods Comparison
The Hearing Officer (HO) first examined the scope of the goods in question. Since "pharmaceutical preparations" broadly refers to products used for treating various ailments and is often available in numerous forms, the HO found that Boston Healthcare's goods fell within the scope of Novartis's trademark, making the goods identical or highly similar. This overlap, according to the HO, extended to common trade channels, users, physical characteristics, and competitive market positioning.
Assessment of Similarity Between the Marks
The HO then analyzed the visual, aural, and conceptual similarities between EMOLITE and EDOMIDGE:
Visual Similarity:
The marks are visually similar, both comprising seven letters and sharing identical letters in the first, third, fifth, and seventh positions (E, O, I, and E). Additionally, both marks contain an "M" in positions two and four.
Despite these similarities, the overall impression of each mark was deemed distinct enough due to the differences in their second, fourth, and sixth letters.
Aural Similarity:
Both marks contain three syllables and could be pronounced with some phonetic similarity, especially given the identity of the second syllable. The HO rated the aural similarity between the marks as ranging from medium to fairly high.
Conceptual Similarity:
The HO found no inherent meaning in EDOMIDGE. Although Novartis argued that EMOLITE could be interpreted as a “light emollient,” the HO rejected this claim, noting that LITE in EMOLITE might be recognized as a simplified or “lighter” version of a product.
As a result, the marks were considered conceptually dissimilar. If consumers did not interpret LITE as a standalone element, both marks would be perceived as invented, conceptually neutral words.
Decision on Consumer Confusion
The case focused on the perception of the "average consumer" of pharmaceutical products, who could be either a healthcare professional or a member of the general public. Both groups typically exhibit an above-medium to high degree of attention due to the nature of pharmaceutical products.
Despite the visual and aural similarities, the HO determined that these shared elements resulted from a mere coincidence in letter placement rather than a purposeful or recognizable common element. The differences in the remaining letters, along with the high level of consumer attention, led the HO to conclude that the marks would not be confused as originating from the same source. Additionally, without a consistent common element, the marks did not suggest an evolutionary brand extension—something typically expected in cases where brands introduce new variants under a recognizable trademark.
Conclusion: Opposition Rejected
The UK IPO ultimately rejected the opposition, finding that the similarities between EMOLITE and EDOMIDGE were insufficient to lead to confusion. This decision reaffirmed the importance of a distinct common element for an assumption of a brand connection or extension, particularly in the pharmaceutical sector where consumer attention is heightened.
Key Points from the EMOLITE Case
High Attention Level: Pharmaceutical consumers, both general public and healthcare professionals, are likely to exhibit an above-average degree of attention, which reduces the likelihood of confusion.
Coincidental Letter Similarity: A mere coincidence in a series of letters is not enough to establish confusion; a shared element or purposeful resemblance is generally required.
Evolutionary Brand Extension: In cases involving potential brand extensions, a common and recognizable element in the trademarks is necessary to imply a connection between the marks.
The EMOLITE case provides valuable insights into trademark opposition and the criteria for determining similarity and potential confusion. For pharmaceutical companies, it underscores the importance of unique brand identities and careful trademark selection to avoid unintended similarities with other products in the market.