Case:Aventis Pharma S.A. v Acorda
Drug: AMPRIVA, application No. 1,452,781
Nature of case: Trade-mark Opposition Board
Successful party: Divided
Date of decision: April 21, 2015
This was a decision of the Trade-marks Opposition Board
(TMOB or the Board) respecting
the likelihood of confusion between the applicant's mark
AMPRIVA and the opponent's mark APIDRA®. The Board found
that there was a likelihood of confusion between the marks as
diabetic patients on APIDRA® could also be prescribed AMPRIVA
for diabetic neuropathy. As such, the section 12(1)(d) ground of
opposition was allowed in part. The application was also allowed to
proceed in part, excluding diabetic neuropathy from the list of
diseases subject to treatment.
Acorda Therapeutics, Inc. (Acorda) filed a
trade-mark application for the word mark AMPRIVA (application No.
1452781), for use in connection with pharmaceutical preparations
for the treatment of various listed neurological diseases,
including diabetic neuropathy. Aventis Pharma S.A.
(Aventis) opposed the mark on a number of grounds,
including registrability, non-entitlement and distinctiveness of
the mark. Aventis opposed the mark on the basis that there was a
likelihood of confusion with its mark APIDRA®, for use in
association with pharmaceutical preparations for the treatment of
The main issue in this opposition was the registrability of the
AMPRIVA mark under section 12(1)(d) of the Trade-marks
Act. The Board summarily dismissed Aventis' grounds of
opposition for non-entitlement and distinctiveness as they had
failed to meet the evidentiary burden to support the
Likelihood of confusion between APIDRA® and
Aventis opposed the registration of Acorda's mark AMPRIVA on
the basis that a consumer would likely confuse the source of the
goods as emanating from Aventis. The Board undertook an analysis of
confusion based on the evidence before it. Notably, the applicant,
Acorda, did not file any evidence to support the application in the
opposition proceeding, but did file a written argument. The Board
refused to consider state of the register evidence attached as an
Annex to Acorda's written representations on the basis that it
should have been filed as evidence.
With respect to the factors for assessing confusion, the Board
focused its analysis on the nature of the goods and channels of
trade as between the two marks. Based on affidavit evidence filed
by the opponent, the Board concluded that there was a strong
possibility that the pharmaceutical preparations could be used to
treat the same type of patients, specifically, that diabetic
patients taking APIDRA® could suffer from diabetic neuropathy
and as such, could be prescribed the applicant's product
AMPRIVA. There was no evidence to link the opponent's product
to the other neurological diseases listed in the applicant's
The Board also determined that there could be confusion as to
the source of the goods based on the degree of resemblance between
The application for the mark AMPRIVA was allowed in part. The
Board required the applicant to remove diabetic neuropathy from the
list of diseases in the description of goods.
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