The trends in the creation of the trademarks in the field of pharmaceuticals
The development and release of effective medicinal products to the commercial markets are the main objectives of the pharmaceutical industry. In accordance with the Federal Law “On Circulation of Medicinal Products,” the right holder of the registration certificate for a medicinal product shall give the latter a trade name. The legislation of Russia does not contain the norms describing the peculiarities of the registration and protection of the rights to the trade name, however, there is an institution of trademarks, which, undoubtedly, can be considered as a legal analogue of the trade names. Since the medicinal products play a significant role in pharmaceuticals, and they act under some designation in the turnover, it seems logical to analyze the peculiarities of the trademarks in terms of the use for the medicinal products.
The advantages of the registration of the medicinal product trade name in the form of a trademark
Despite the fact that the legislator does not oblige companies to register the trade names of the medicinal products as trademarks, such actions are appropriate for the following reasons:
- The registered trademark gives the right holder a monopoly right to use the protected designation.
- The minimum protection period of the trademark is 10 years. Then, upon the holder’s declaration, it is possible to extend the validity period of the certificate for 10 year an unlimited number of times. The maximum protection period of the invention in respect of the medicinal products is 25 years. Thus, the right holder can enjoy the exclusive rights to the trademark during the entire validity period of the patent protecting the medicinal product. In this case, it is possible to speak about a full defense of the product from illegal encroachments in respect of both the product, and the designation distinguishing the product.
- The availability of the protection documents ensuring the defense and lawful holding several subject matters of intellectual property allows the holder concluding the license agreements for the use of a set of the rights. The advantage is the fact that the interested parties, while concluding the license agreements, get an opportunity to use the set of the subject matters (since the patents belong to one right holder) ensuring the lawfulness of the manufacture of the similar product.
- After the expiration of the validity patent for the invention, in the case of keeping the existing certificate for the trademark, the company can continue manufacturing the medicinal product under the name that is already known to the consumers.
- In the case of illegal actions, the company has a full range of the opportunities to defend and restore the violated rights. The development, manufacture and release to the market of the medicinal products require substantial money costs. It is logical to assume that there is a large number of unfair entrepreneurs wishing to be engaged in the illegal manufacture of the medicinal products. The legal regime of the protection of the registered inventions and trademarks allows the legal holders suppressing the illegal actions of other persons and recovering damages from them.
All the above circumstances indicate the feasibility of the registration of the medicinal product name as a trademark.
The varieties of the trademarks registered in the pharmaceutical field
The registration of the trademarks used in respect of the medicinal products is stipulated by the 5th class of the International Classification of Goods and Services. The procedure for granting the legal protection to such designations is similar to a conventional one.
The trademarks registered for the use in the pharmaceutical industry can be classified according to the following grounds:
- Depending on the moment of filing the designation for the registration.
- The means of individualization, in which respect the application for the registration is filed before the release of the medicinal product to the commercial market. One of the steps preceding the sale of the product (in this case, the medicinal product) is the creation and registration of the trademark.
- The designations claimed after the beginning of the use of the name. The company may release the medicinal product to the market, and make a decision subsequently on the need for protecting the means of individualization used in the form of a trademark.
- Depending on a degree of uniqueness of the designation.
- The names that do not have any association with the active substances of the medicinal product, etc. Such designations are created for the manufacturers that consider the registration of the unique trademark as successful. When developing the trademark, the creators rely on the novelty of the designation, and if the product is promoted correctly, an associative link “product-designation” is fixed firmly in the consumer's mind. The positive aspects of such position are that even after the expiration of the validity period of the patent for the invention, the consumer will buy most often the medicinal product under the name that is already known to him.
- The trademarks including the word elements being consonant with or containing the derivative words from the International Nonproprietary Names of the substances included in the medicinal products (INN). A strong aspect of such trade names is a direct and obvious for the consumer link between the medicinal product and its formulation or active substance. However, such names are quite difficult and most often impossible to register as trademarks.
- Depending on a kind of the designation.
- The means of individualization consisting of the word elements, namely: a combinations of the letters having a word character, words, sentences, as well as their combinations. In this case, the issue is about the designations consisting solely of the trade name under which the release of the medicinal product to the market is planned.
- The combined trademarks are the designations that consist of several varieties of the elements: word, visual or holographic. For example, the trademark that includes the name and the visual element associated with the active chemical substance or that informs the consumer about the purposes for which the medicinal product can be used (an image of a sore throat, head, etc.).
The said varieties allow concluding that there are different kinds of the designations and the conditions for their registration. This allows the companies working in the field of pharmaceuticals choosing the best variant for the registration of the trade name in the form of a trademark to distinguish the medicinal product at the commercial market.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63