Flegamina, which comes in the form of syrup as well as tablets, is a well-known medicine in Poland for upper respiratory tract infections. Advertisements of this pharmaceutical product have been in the press or on television for many years. The latest decision of the Polish Patent Office, which found, inter alia, that the trademark FLEGAMINA (R.056103) has a reputable character, should therefore come as no surprise. On the other hand, the invalidation of the mark FLEGAMAX (R.278762) on the grounds of infringement of the rights to the reputed mark and not the existence of a risk of confusion, despite the fact that the goods covered by the conflicting signs were identical, should be regarded as a relatively precedent-setting solution in Polish case law. The decision is not final. For the time being, we only know the reasons for the decision from the verbal grounds provided by the PPO.

Decision on invalidation

By decision of 27 February 2024 (Sp. 156.2019), the College of the Patent Office invalidated the trademark protection for FLEGAMAX (R.278762) belonging to Swiss Pharma International AG, Switzerland. The mark was applied for on 7 November 2014 and registered in Class 5 for the following goods: pharmaceutical and veterinary products; sanitary preparations for medical purposes; dietetic food and substances for medicinal or veterinary purposes; food supplements for humans; vermin control products; fungicides.

An application for a declaration of invalidity was filed by Teva Operations Poland sp. z o.o., which holds the protection right for the trademark FLEGAMINA (R.056103) applied for on 10 November 1977 and registered in Class 5 for pharmaceutical preparations.  The applicant raised the allegation of a risk of confusion (Article 132¹(1)(3) of the IPL), infringement of rights to a reputable mark (Article 132¹(1)(4) of the IPL) and the allegation that the mark misleads the public (so-called confusing mark – Article 129¹(1)(12) of the IPL).

Infringement of rights to a reputable mark

Ultimately, the right of protection for the trademark FLEGAMAX was invalidated on the basis of Article 132(2)(3) of the IPL (now Article 132¹(1)(4)), i.e. on the grounds of infringement of the rights of a reputable mark. In the opinion of the College, the applicant proved the reputational character of the FLEGAMINA mark.

Of key importance was the report submitted by the applicant, which showed that half of the respondents treated FLEGAMAX as an enhanced dose of the drug FLEGAMINA. It was therefore undisputed that, given the identity of the goods, there was a possibility that the holder of the disputed mark would gain undue advantage. As the Patent Office emphasised, goods bearing the designation FLEGAMAX will attract the attention of the public through the element FLEGAM, which is the origin of the reputable mark FLEGAMINA.

The decision of the Patent Office is subject to a request for reconsideration and a complaint to the Voivodship Administrative Court in Warsaw.

Summary

When analysing the conflicting marks, similarity (resulting from having 6 identical letters FLEGAM in the initial part of the mark) was found to be a necessary condition for infringement of reputable mark rights. However, in case of an infringement of a reputable mark, the degree of similarity required will be lower than in case of an ordinary risk of confusion. It is accepted in case law that even a low degree of similarity will be sufficient for infringement of reputable mark rights (see Judgment of the General Court of 28 October 2010 in Case T-131/09, Farmeco AE Dermokallyntika). However, this is not self-evident, as it is important to bear in mind different case law, i.a. the judgment of the CJ of 7 May 2009 in Case T-185/07, CK CREACIONES KENNYA paragraph 55 – in which the CJEU indicated that with regard to infringement of reputable mark rights, the same assessment of the degree of similarity of the designations is made as in the examination of the risk of confusion. The case concerning the infringement of the rights to the reputable mark FLEGAMINA was finally resolved on the basis of Article 132¹(1)(4) of the IPL, i.e. due to the infringement of the rights to the reputable mark. Despite the identity of the goods for which both designations were registered, the College did not decide to invalidate the right of protection on the basis of the risk of confusion alleged by the applicant. The reason for such a decision may have been that the similarity between the compared marks was too low. The decision of the Patent Office is particularly interesting, especially as infringement of rights to a reputable mark rarely constitutes grounds for invalidation.