Afrin and Ephrine, confusingly similar or not?

Schering Plough filed a trademark application “Afrin” for decongestants, nose drops, nose moisturizer, nasal sprays and the like. Because there are eye-drops on the market that are called “Ephrine”, manufactured by Fischer Pharmaceuticals, that are spelled in Hebrew in a way that could be read the either way, the Israel Trademark Office refused the mark. On appeal, the agent for the applicant argued that eye drops and nose drops are very different, only one needs a prescription, one features the name in Hebrew and English and the other in English only. 

Since the two products are sold in pharmacies and are for similar products in the same class, the Commissioner of Patents and Trademarks ruled that there is a likelihood of confusion, particularly as neither product is for chronic use, but rather for treating occasional ailments, and so consumers could easily make a mistake. Due to the fact that the preparations are used for medical purposes, mistakes of this nature could have serious repercussions.

The appeal was dismissed.

The case: TM 216996 to Schering Plough



Categories: drugs, Intellectual Property, Israel, Israel Patent Office, Israel Patent Office Rulings, Israel Trademark, pharmaceuticals, pharmaceuticals and Biotechnology, trademarks

3 replies

  1. Very interesting topic. Likelihood of confusion can be very broad and subject to each individuals perception. Personally I think that if the final consumer is not affected in his choice there should not be confusion, since they are not going to be in the same shelve and they have very different packaging I have a hard time thinking that the consumer could mix them up, after all isn’t the protection of the costumer the origin of the trademark protection? at least thats how it works in Mexico.

    • The commissioner was not presented with the packaging, and in the ruling, makes clear that he was not sure whether the non-prescription product would be taken from the shelf by the customer or ordered over the counter from the pharmacist.

      Also, unlike medication for a chronic disease, nose and eye drops are taken occasionally, so there is an assumed lack of familiarity with packaging and spelling as compared to the situation for patients who take the same medicine day in and day out.

      Finally, please note that the trademark is a wordmark and not for the packaging. I downloaded the pictures for ilustrative purposes.

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