The International Nonproprietary Name of a medicinal product (INN): why do manufacturers choose similar names for trademarks?

The International Nonproprietary Name of a medicinal product (hereinafter referred to as the INN) is a name of the active ingredient of a pharmaceutical substance that is approved by the World Health Organization as generally accepted and generally applicable.

According to the legislation of the Russian Federation, the registration of the trademarks being identical to the INN or representing the names derived from them shall be prohibited. Due to this reason, at the stage of carrying out an examination of the designation, in accordance with the Order of Rospatent, the specialists of the Office check the claimed trademark as to being similar to the existing and approved INN.[1]

When creating the trademark for the use in relation to the medicinal products, the future rights holders may follow one of three possible strategies:

1. To develop a fantasy designation and to popularize it to increase the recognition among consumers.

 In this case, the trademark will have nothing to do with the INN of the pharmacological substance included in the drug. This kind of the means of individualization is considered to be the most protectable, since the refusal to register it due to the fact that it is identical to the INN is impossible, and the risks of challenging the current protection due to the similarity to the known name and the occurrence of disputes with the right holders of other means of individualization are minimal. 

The trademark of the company OTCPharm can be given as an example. The firm has registered the designation Ascophenum-P for the use in respect of the products from the 05^th class of the ICGS.[2] The said trademark is fantasy, while the creators has managed to associate it partially with the names of the active ingredients: Acetylsalicylic acid, Caffeine, Paracetamol.

2. To try to obtain a certificate for the trademark that includes the name that is identical to the INN or confusingly similar to it. Despite the fact that the registration of such designations is legally prohibited, the future owners of the means of individualization try rather often to register the INN in the form of a trademark. 

This is due to a number of reasons:

• Firstly, the INN is a widely used and unified name, which is actively applied by medical professionals, and, therefore, this designation is recognizable by both them and the consumers. Thanks to this fact, placing such designation on the packaging of the drug increases automatically demand due to its popularity.
• Secondly, the INN is an international designation used in different countries, so some applicants expect that the INN will facilitate the promotion of the drug and increase its popularity, if it enters the foreign markets. Although, while assessing the situation objectively, it may be stated surely that the international organizations and the foreign Offices also adhere to the policy of refusing to register the trademarks being similar to the INN. Therefore, it is unlikely that such means of individualization will be registered by the authorized bodies of other countries.
• Thirdly, the right holder of the trademark has the exclusive rights of an absolute nature. That is, the third parties may in no manner use the designation without the owner’s permission, including by indicating it on a label, except the cases stipulated expressly by the law. As to the INN, the recommendations for indicating the name on the packaging are indicated expressly on the WHO website.[3] Thus, after the registration of the INN as a means of individualization, the right holder gets a monopoly right to use the designation, what is contrary to the INN nature and what deprives other manufacturers of the medicinal products of the legal rights to the use of the generally accepted name. The unfair actions of this kind allow the right holder of the trademark to deprive his competitors of the opportunity to indicate the INN on the packaging of the product. Undoubtedly, this leads to reducing the volumes of the sales of the latter, because, in the majority of the cases, while choosing the drug, the consumers are guided by the INN that indicates to the main pharmacological substance.Unfortunately, there are the examples in the domestic practice, when the designations that are confusingly similar to the INN are registered. The most demonstrative case is the registration by Rospatent of the trademark “Carniton” for the 05^th class of the ICGS, though there is the approved INN “Carnitine.” The interested parties had undertaken the numerous attempts to challenge the registration of the designation and they managed to achieve the recognition of the trademark to be invalid only as a result of the consideration of the case by the Supreme Arbitration Court.[4]Another case of challenging the actions of Rospatent regarding the registration of the designation was considered by the Presidium of the Intellectual Property Court. In 2011, JSC “KPKA” became the right holder of the trademark “Bravadin” in respect of the 05^th class of the ICGS, while there is the INN “Ivabradine.” In 2016, the first-instance court managed to recognize the legal protection to be invalid, however, the owner of the designation challenged the decision of the court, and only the Court of Cassation put a final end to the conflict in 2017, by recognizing the decision of the first-instance court as true and legal.[5]

3. To create a combined designation, which includes the INN or its fragments in the form of unprotected elements. In this case, the potential right holder pursues the aims, which are similar to the above. But realizing the impossibility and illegality of the registration of the INN as a trademark, he indicates it in his application as the element that will not be covered by the exclusive rights. While carrying out an examination of the means of individualization, the specialist finds out the significance and role of the INN in the whole trademark composition, and provided it does not occupy a dominant position, making a positive decision in favour of the registration of such trademark is possible.

Such tactics can be considered as the most successful one. The right holder applies the INN together with other elements, which in the aggregate compose the trademark. The current legal protection allows avoiding unfair copying the means of individualization and the general appearance of the packaging. The similar strategy for the creation and registration of the trademark was chosen by the company OTCPharm.  According to the results of the check, Rospatent registered the combined trademark containing the word combination “Magnelis B6 Magnesium + Pyridoxine 50” (Fig. 1). In this case, the following was indicated as the unprotected elements: “All letters, numbers and words, except for “Magnelis,” the marks “+,” “®.”[6] Thus, the approved and applied INN was withdrawn from the legal protection.

Fig. 1

In conclusion, it should be noted that whatever strategy for the development and registration of the trademark has been chosen by the right holder, by using the INN in the designation, he pursues the aim to attract the attention of the consumer to the drug and to facilitate selecting the product among the existing variety of the homogeneous products.