Ru

Серверная ошибка, обратитесь к техническому специалисту

Author
Olga Plyasunova

Trademark attorney

18 December 2019

The peculiarities of an examination of the trademarks registered in respect of medicinal products


According to the norms of the Federal Law “On Circulation of Medicinal Products,” a drug developer or a registration certificate holder shall give a trade name to a medicinal product. The latter one may be registered as a trademark. Obtaining the state certificate for a means of individualization will allow the right holder using the exclusive rights belonging to him/it in full.

The kinds of the names used in respect of medicinal products

If to consider the trade names of the drugs from the point of view of the uniqueness of the designations used, the following kinds can be highlighted:

  1. The original names that consist of the word elements of a fantasy nature.One of the well-known medicinal products that are distinguished by the fantasy trademark is the medical drug “Venarus.” The designation registered in respect of JSC Pharmaceutical Enterprise Obolenskoye has a fictitious nature and it contains an indication to the sphere of the exposure of the medicinal product.[1] This makes it easier for a consumer to choose the necessary drug.
  2. The derivative names, which are the word elements, as well as their combinations, which indicate indirectly or directly to an international nonproprietary name of the drug or to its active ingredients. The previously valid trademark of the company Spofa—Usines Pharmaceuticals can be given as an example.[2] The designation “Ascorutin” has been registered in respect of the medicinal products and it is a combination of the word elements consisting of the abbreviated names of the chemical substances that are incorporated in their composition: ascorbic acid and rutin.

The classification offered above allows explaining partially the specific requirements lodged for the names of the medical drugs protected in the form of the trademarks.

The peculiarities of an examination of the trademarks registered in respect of medicinal products

The trademarks used for the individualization of the drugs are stipulated by the 5th class of the ICGS. According to the provisions of the Civil Code of the Russian Federation, any additional requirements shall not be lodged to such designations and they, similarly to other trademarks, shall undergo two steps of checking for the compliance with the patentability conditions required.

The first step is carrying out a formal examination: the specialists check the availability of the necessary documents and the correctness of filling in them.

The second step is carrying out the examination of the designation for the compliance with the requirements stated in Article 1483 of the Civil Code of the Russian Federation. At this stage, there are a number of the peculiarities associated with an analysis of the designations claimed in respect of the medicinal products.

According to Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation: “The state registration as the trademarks shall not be allowed in respect of the designations, which do not have a distinctive ability or which consist only of the elements that:

1) have come into a general use to designate the products of a certain kind;

2) are the general symbols and terms... .”

The trade names and the International Nonproprietary Names (the INN, for short) may be used in respect of the drugs. The registration of the original name as a trademark is quite possible, while the registration of the INN as a trademark is contrary to Subparagraph 1 and Subparagraph 2 of Paragraph 1 of Article 1483 of the Civil Code of the Russian Federation. Thus, while checking the designation as to the compliance with the requirements of the above Paragraphs, the experts pay an increased attention to a analysis of the word elements of the trademark and carry out a comparative characteristic with the INN that are currently available. In addition, it should be noted that in the case of the registration of the combined trademarks, which contain the visual elements, it is also necessary to avoid the general symbols. For example, the designations with an image of the famous mark of medicine in the form of a snake with a bowl may not pass an expert examination. Or such fragment, due to the fact that it is widely used as a general symbol by various companies in the field of medicine and it can be attributed to the unprotected elements.

 In accordance with Paragraph 3 of Article 1483 of the Civil Code of the Russian Federation: “The state registration as the trademarks shall not be allowed in respect of the designations, which are or contain the elements:

1) which are false or capable of confusing the consumer in respect of the product or its manufacturer... .”

Applying the provisions of this Paragraph to the trademarks used for the individualization of the medicinal products, it is possible to note a special importance of the prohibition on the registration of the designations that are false and capable of confusing the consumer. The fact that trademarks are applied in respect of the medical drugs allows concluding that there is a potential possibility of doing harm to the health of the buyer. The reason for this may become the erroneous conclusions of the consumer. For example, regarding the sphere of the exposure of the drug or its composition due to the presence of the false elements incorporated in the trademark.

 It is also not allowed registering the designations that are identical or confusingly similar to the means of individualization and other subject matters of intellectual property belonging to other right holders that are registered duly and have an earlier priority date. In this case, the legislator is also intended partly to defend the buyer, who, according to a general rule, does not have the specific information regarding the manufacturer of the drugs. In the case of the registration of the similar subject matters, the probability of confusing the products is high.

 In conclusion, it should be noted that all the above described peculiarities of the examination of the designations claimed for the registration as the trademarks in respect of the drugs are due to the specifics of the individualized products. Namely: due to the possibility of their influence on the body and the well-being of the consumer and due to the danger of doing harm to the health of the buyer in the case of confusing him or due to the incorrect interpretation of the information contained in the name of the drug.


Share on social media:
Back to articles list