The Rospatent’ approaches in respect of the registration of the trademarks for pharmaceutical drugs and BASs

In accordance with the Regulations on the Federal Service for Intellectual Property, the Rospatent’s powers include the functions for the state registration of trademarks, as well as for the receipt and examination of applications for obtaining the legal protection in respect of the trademarks.[1]

Thus, within the Office, among other things, the following is carried out:

• Carrying out a formal examination that allows confirming the availability of the necessary documents and their compliance with the requirements lodged.
• Checking the designation claimed for the registration as a trademark.

And if the formal examination is essentially an analysis of the “completeness” of the package of the documents filed and their compliance with the conditions, then the examination is essentially a laborious process, during which the specialist will have to find out the degree of uniqueness of the designation and to determine whether the requirements mandatory for the registration are complied.

The norms of the Civil Code of the Russian Federation contain the general conditions for the patentability of the trademark. Which in general come down to the need for:

• the availability of a distinctive ability in the designation;
• the absence of the elements that contradict the public interests and the moral and ethical principles;
• the absence of the possibility of confusion with other designations and confusing consumers;
• not infringement on the rights of the owners of other subject matters of intellectual property.

Considering the received application, the Rospatent’s specialist, at the designation examination stage, checks first of all the compliance of the trademark with the above requirements.

The modern markets are characterized by a wide variety of products. To confirm this, it is enough to recall that the generally accepted International Classification of Goods and Services (ICGS) used to identify and to differentiate between the designated groups contains 45 classes, each of which has a list being impressive in sizes. For this reason, the examiner, after the general check of the trademark, will have to check the designation for the compliance with the so-called particular requirements that may be lodged to the means of individualization used in respect of some certain products. As a rule, the information and explanations about the peculiarities of such check are disclosed in detail in the bylaws adopted by Rospatent. The creation of the documents of such kind is aimed at creating the uniform practice of carrying out the examination. They describe the circumstances that deserve individual attention, while analyzing a particular type of the designations, indicate the possible variants for resolving disputable situations and also contain the information that simplifies the trademark examination.

The peculiarities of the check of the designations claimed for the registration in respect of pharmaceutical drugs and BASs

Like all other trademarks, the designations that are claimed for the individualization of medicinal products and biologically active supplements are checked at first for the compliance with the general requirements indicated in the norms of the Civil Code of the Russian Federation.

In addition to the above, taking into account the specificity of the scope of the application, it is possible to highlight the following moments that require the individual attention of the examiner:

1. The peculiarities of the examination of the trademarks indicated for the designation of the medicinal products.

• Due to the fact that taking the pharmaceutical drugs can affect the human body, it is very important to make sure that there is not even a hypothetical possibility of confusing the consumer about the properties and composition of the product, as well as about its manufacturer. Around the world, a number of the uniform names are applied in respect of the pharmaceutical drugs that are called the International Nonproprietary Names (INN). Russia, in accordance with the norms of the international treaties, supports the use of such designations and undertakes measures to prevent confusing the trademarks and the INN. Thus, the examiner, in addition to other circumstances, checks the designation for the availability or the absence of the similarity of the word element with the registered INN by carrying out a comparative analysis of the trademark with the names available in the public databases of the approved INN.[2]
• In addition, it is worth highlighting the availability of a common symbol used in the pharmaceutical field. In particular, the Regulations developed by Rospatent state that the image of a bowl with a snake is a common symbol used in the medical field.[3] Taking into account this circumstance, the indicated element may be included in the trademark as an unprotected one and provided that it does not dominate in the designation.  The following are considered to be other common designations used in the pharmaceutical field: the image of a red cross, which is the emblem of the Red Cross International Movement, and it can be used with the permission of the authorized body, as well as a visual element in the form of a green cross that is usually used for the designation of pharmacies.

2. The conditions for checking the designations claimed in respect of the BAS.

• According to the norms of the current legislation, the biologically active supplements are not the medicinal products because of the difference in the result that is possible from taking the indicated drugs and the difference in their composition and the nature of origin. However, despite this, the risk of confusing the consumer is no less significant. Therefore, when checking the designation, the Office’s specialist also finds out whether the designation claimed for the BAS is similar to the already registered INN. To confirm this, it is possible to give a reference from the Order of Rospatent “On the Use of the Database of the International Nonproprietary Names (INN)”: “The WHO database containing the information about the INN is recommended for the use as the additional source of the information within the framework of carrying out the examination of the designations claimed for the state registration as the trademarks in respect of the products of class 05 of the ICGS... .”[4] This indicates that it is possible to carry out a comparative analysis of the trademarks claimed for any of the designations in class 05 of the ICGS with the available INN. It is worth noting that this provision is defensible and justified: confusing the consumer in respect of the availability of the medicinal substance in the composition of the BAS (what in fact can not be) can result in the most adverse consequences for a layman.
• As another moment that also deserves the examiner’s attention, it is necessary to mention the check for the absence of the similarity between the claimed trademark and the designations of the products registered in the Register that have passed the state registration, which is maintained by Rospotrebnadzor.[5] According to the norms of the domestic legislation, the BASs that have been first introduced, as well as the ones that are first imported into the territory of the Russian Federation, must be registered in the above Register under the name used. Subsequently, the Office’s specialist checks the word element of the trademark using the publicly available database and in the case, if there is an identical name that is registered in respect of another person, makes a decision that it is impossible to register the trademark for the BAS in order to prevent deceiving the consumer. 

3. The peculiarities of the check for the similarity of the designations registered for the BAS and the pharmaceutical drugs.

• Based on the available judicial and law enforcement practice, it can be stated that the BAS and the medicinal products are the homogeneous products. This can be confirmed by Rospatent's Information Letter of November 5, 2008 No. 10/37 - 646/23, where it is indicated that the BAS and the medicinal products can coincide with the forms manufactured (syrups, tablets, capsules, etc.) and they also have a single sales market and a common circle of consumers, in connection with which these products should be considered as homogeneous. For this reason, while checking the designations, the examiner also compares the claimed designation and the available trademarks in the field of the medicinal products and the BASs for their similarity.

In conclusion, it should be noted that the peculiarities of the designated products (BASs and medicinal products) determine the additional conditions for the check of the trademarks, which are aimed at minimizing the risk of confusing the consumer about the characteristics, properties of the product, its manufacturer, as well as the consequences of using these categories of the products.