AIPPI 2015: Double trademark assessment can cause headaches
The double assessment of trademark applications for pharmaceutical products can cause problems for intellectual property owners, lawyers have claimed.
Speaking at the 2015 AIPPI World Congress, currently taking place in Rio de Janeiro, lawyers said local IP offices and regulatory health bodies can often be at odds with each other.
Speakers from Brazil, the US, and Canada addressed delegates in this morning’s, October 13, session called “Don’t miss the (right) mark”.
Matthew Asbell, partner at law firm Ladas & Parry in New York, said drug makers should be keen to avoid the “train wreck” scenario of a trademark being approved by the US Patent and Trademark Office (USPTO) but not by the Food and Drug Administration (FDA).
Asbell added that brand owners can run into difficulties during this process.
First, he said, the USPTO only considers prior use by other federal registrations, not trademarks acquired “through use”, while the FDA may reject a mark based on an existing drug using the same name.
“The FDA will not always give a rationale for refusal and sometimes it’s really guess work to determine the reasoning,” he added.
He cited two examples of what an unsuccessful applicant could do in response.
“If a name includes a stem that has been approved by the World Health Organization you can sometimes get them to assist you, or you can also do a citizen’s petition, where you essentially beg the FDA to assist you.”
He added that if the USPTO rejects a mark that the FDA accepts, the drug owner would lose the “presumption of rights” offered by a federal registration.
“The USPTO does not look at common law uses in determining use of a mark; it’s important for a brand owner that a full search is done,” he continued.
Steve Garland, a partner at law firm Smart & Biggar/Fetherstonhaugh, said that, like in the US, there are common law rights in Canada. However, he added, even if Health Canada had approved an application but the Canadian Intellectual Property Office rejected it, it would not be wise to proceed with using it.
“Even though you may not get a trademark registration, it does not stop you using the mark. But if the office had determined there was confusion, there is a potential risk. If you want to succeed on passing off, for instance, you would need to show that your mark is distinctive.”
Jacques Labrunie, a partner at law firm Gusmao & Labrunie, spoke about the situation in Brazil, where applications for patents and trademarks are assessed by both the Brazilian Patent and Trademark Office (INPI) and the National Health Surveillance Agency (ANVISA).
This, he said, has caused “problems” in the pharma sector for patents and trademarks.
Garland added that changes to Canada’s Trade-marks Act approved this year, which are due to come into force in 2017, will no longer require an applicant to provide information on use of the mark or the date of first use during the application process. He said that Canada is expected to accede to the Madrid Protocol in 2017.
The 2015 AIPPI World Congress runs from October 10 to 14 at the Windsor Barra Hotel and Congressos in Rio.
