‘Citramon’ held to be generic for painkillers

On May 13 2011 the Supreme Court of Lithuania issued a final ruling in Stirolbiofarm Baltikum v AB Sanitas, a dispute which started in 2006. The court held that the term ‘citramon’ (or its variants ‘citramonum’ and ‘citramonas’) was a generic name for the medicinal substance consisting of paracetamol, aspirin (acetylsalicylic acid) and caffeine. Therefore, the mark had no distinctive character for goods in Class 5 of the Nice Classification (“medicinal substances”). Moreover, the court held that the element ‘citramon’ in AB Sanitas’ trademark registration for NEOCITRAMONAS (Registration 30921) should be disclaimed.

At the end of 2009, after the Supreme Court had returned the case to the first instance court, Latvian company Stirolbiofarm Baltikum filed a revised claim with the Vilnius District Court requesting that the court:
 
• recognise that ‘citramon’ was a generic name for a certain medical substance and had no distinctive character for goods in Class 5; and 
• cancel Sanitas’ registration for the NEOCITRAMONAS mark on the grounds that it did not meet the absolute requirements for trademark registration, as it consisted of two generic words (‘neo’ and ‘citramon’).

The action was filed under Article 6, Part 1, Paragraphs 2, 3 and 4 of the Law on Trademarks of the Republic of Lithuania. These provisions state that a sign shall not be recognised as a trademark and shall be refused registration, or the registration of a registered mark shall be declared invalid if:
 
• it  is devoid of any distinctive character; 
• it has become customary in the current language or in the good-faith and established practices of the trade; and/or
• it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended  purpose, value, geographical origin or the time of production of the goods or of the rendering of the service, the mode of production or other characteristics of the goods and/or services. 

The Supreme Court had previously upheld decisions of the Vilnius District Court and the Appeal Court, which were based on arguments and evidence presented by Stirolbiofarm Baltikum. This evidence demonstrated that ‘citramon’ had been used for over 50 years to designate a certain medicinal substance composed of acetylsalicylic acid, paracetamol and caffeine by various producers and distributors; moreover, in the post-Soviet countries, as well as other countries, the medicinal substance called ‘citramon’ is one of the most popular drugs and is identified as a painkiller by consumers. Therefore, the sign ‘citramon’ does not perform a distinguishing function, as it has become a common name among Lithuanian consumers to designate painkillers. 

Nevertheless, the Supreme Court modified the ruling of the Appeal Court insofar as it cancelled Sanitas’ registration for the trademark NEOCITRAMONAS. According to the Supreme Court, the NEOCITRAMONAS mark (as a whole) had acquired distinctive character due to its lengthy and widespread use, as well as its reputation among the relevant public (which was demonstrated by the results of an opinion poll). Therefore, Sanitas had exclusive rights in the NEOCITRAMONAS mark. 
 
However, the Supreme Court also decided that the term ‘citramon’ in the NEOCITRAMONAS mark should be disclaimed under Article 8(2) of the Law on Trademarks and according to the case law of the Supreme Court.

This final ruling of the Supreme Court gives the opportunity to every interested party to register trademarks including the element ‘citramon’ in the Republic of Lithuania. 

Giedre Domkute, AAA Baltic Service Company-Law Firm, Vilnius

Source: http://www.worldtrademarkreview.com