30 September 2013Big Pharma

AIPPI 2013: Pharmaceutical products and the trademark hiccup

During a workshop on September 6, one issue discussed was the difference between a trademark signifying a branded product and an international nonproprietary name (INN), which signifies a medical effect.

Examples of registered INNs include -olol for beta blockers (eg, atenolol) and -oxetine for fluoxetine derivatives, a group of antidepressants.

Raffaella Mattivelli, INN programme manager at the World Health Organization (WHO), said: “We have developed a resolution to ensure the INN is prominently displayed on the box of products and is easy to understand.

“However, using trademarks which are related to, or similar to, an INN is discouraged,” Mattivelli said.

“We ask that brand owners do not include the stems (a string of letters which defines chemical or medicinal groups) in a trademark name. There should be no similarity with INNs and they should not be confusingly similar with products already existing, or they will be rejected by trademark offices.

“WHO and the World Intellectual Property Organization have a close relationship and work together to ensure that we do not overlap in this area.”

“One way to get round this would be to defer your application for a CTM until the last stage of clinical trials.”

Christian Schalk, senior trademark counsel at Bayer Intellectual Property GmbH in Leverkusen, Germany, highlighted the benefits of obtaining a trademark, but identified the difficulties surrounding confusion between the INN, a requirement for pharmaceutical products, and a trademark, which is a noncompulsory but beneficial tool.

“A trademark serves as a tool for instant recognition and can alter customer decisionmaking,” Schalk said. “The life of a trademark lives far beyond patents, and can live forever provided it is regularly used.

“But, they need to be pronounceable and free from risks of linguistic problems worldwide. At the same time it should not be confusingly similar with an existing INN, which can cause problems.”

Making reference to the Community trademark (CTM), which provides protection across Europe, Joanna Sitko, partner at S&C Patent LLP in Warsaw, Poland, identified potential stumbling blocks for pharmaceutical companies.

“As far as the CTM is concerned, if you hit an obstacle, even if that obstacle concerns only one country, it nevertheless means the whole registration has to be rejected,” Sitko said.

“Furthermore, a trademark has to be used to be protected. Under CTM law if it is not put to use in five years it can be revoked; this is a crucial process as in the pharmaceutical industry it can often take more than five years before a product is fully effective.

“One way to get round this would be to defer your application for a CTM until the last stage of clinical trials, but it can be argued that these measures are unjustified in the pharmaceutical industry.”

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