The Kenyan Intellectual Property Institute (KIPI) recently published its decision to the opposition by Viiv Helathcare UK Limited (“the Opponent”) to the trade mark EFAVIR in class 5 in the name of Cipla Kenya Limited (“the Applicant”).
The Opponent is the proprietor of the mark EPIVIR which has been registered in Kenya in class 5 since 1996. Both EPIVIR and EFAVIR relate to medicinal and pharmaceutical products for the treatment of HIV.
The grounds of opposition included, inter alia, that:
- the mark EFAVIR is so similar to the Opponent’s earlier registered EPIVIR trade mark that it is capable of misleading consumers into believing that they are associated; and
- the EFAVIR trade mark is mala fide on the basis that the Applicant chose a mark so closely resembling the Opponent’s EPIVIR trade mark to compete unlawfully with the Opponent and deliberately deceive consumers.
The issues for determination were whether:
- the marks EFAVIR and EPIVIR are so similar that a likelihood of confusion is likely;
- the Opponent’s EPIVIR trade mark is well-known in Kenya; and
- the Applicant had a valid claim to the EFAVIR trade mark.
The Registrar determined that the suffix VIR which occurred frequently on the Register in class 5 (i.e. in 21 records) in Kenya was suggestive of treatments for viruses. It concluded therefore that the marks to be compared were the suffixes EFA and EPI and that they were not similar. It was also revealed during the proceedings that the parties’ marks had co-existed in the market for approximately 16 years without any instances of actual confusion. The Registrar also acknowledged that these were prescription drugs used to treat serious medical conditions, which meant that members of the public would be more circumspect with regard to the products being offered under each mark. In addition, doctors and pharmacists dealing with the medication, as a result of their duties to their patients and specialised knowledge, would not likely be confused.
The Opponent fell short of establishing its reputation in the EPIVIR trade mark in Kenya. In the Registrar’s view, it has failed to adduce sufficient evidence to prove that its EPIVIR trade mark was well-known in the relevant sector of the population in Kenya.
It was found that the Applicant had a valid claim to the EFAVIR trade mark, having used it in excess of 15 years without any action or compliant from the Opponent and any evidence of actual confusion. In addition, the mark EFAVIR was coined from the active ingredient in the Applicant’s anti- retroviral drug being EFAVIRENZ.
The opposition was therefore dismissed.