Registration and Challenges of Trademarks Derived from International Nonproprietary Names: Practice Relating to Class 5 of the Nice Classification

Registration of trademarks in relation to pharmaceuticals and medicines (Class 05 of the Nice Classification) may have peculiarities due to the importance of these products for the health of consumers. Certain foreign economic events caused the redistribution of market shares of medicines in favor of domestic manufacturers. Problems with logistics and sanctions from Western countries encourage domestic manufacturers to develop new pharmaceuticals and medicines, as well as analogues of medicines not supplied to Russia.

To protect and potentially protect the names of medicines, manufacturers register them as trademarks. For pharmaceuticals, the name of the trademark may be entirely fantasy or may refer to International Nonproprietary Names (INNs). INN is a unique name of the active ingredient of a drug recommended by the WHO. Currently, the Directory of International Nonproprietary Names of Medicines has 9578 INNs.

As stated in the Opinion of the Chamber for Patent Disputes dated 03.10.2022: "The existence of the international nomenclature of INNs is important in terms of clear identification of medicines produced under different names as the most important condition for their correct prescription, dispensing from pharmacies and use by patients. INNs are also the basis for interaction and exchange of information between health professionals and scientists around the world. Another important feature of INN is that names related to substances of the same pharmacological group should demonstrate a relationship with each other on the basis of "common stems". On the basis of knowledge of the 'general basics', practitioners, pharmacists or any other persons dealing with medicinal products can determine whether they belong to a particular group of pharmacological substances having similar pharmacological properties."

In terms of the practice of trademark registration, we will give examples of medicines whose names are derived from one INN (active substance).

• Trademarks "Apixanta" under certificate No 1189966 and "APIXORED" under certificate No 1053731, active ingredient Apixaban. At the same time, fantasy trademarks with the specified active ingredient were registered - "VASOLAID VASOLADE" under certificate No 1124129, "VIAPIX" under certificate No 1134259.
• Trademarks "FLUCONORM" under certificate No 409981 and "FLUCORUS" under certificate No 411498, active ingredient Fluconazole. Fantasy trademarks with the same active ingredient are "DIFLUKAN" under certificate No 99917, "MICOMAX" under certificate No 822940.
• Trademarks "DICLONAT P" under certificate No 118298 and "DICLOVIT" under certificate No 168309, the active ingredient is Diclofenac. Fantasy trademarks with the same active ingredient are "Voltaren" under certificate No 408190, "ORTOPHEN" under certificate No 126273.
• Trademarks "RABEVITA RABEVITA" under certificate No 729850 and "Rabeloc Rabelok" under certificate No 480618, the active ingredient is Rabeprazole. Fantasy trademarks with the same active ingredient are "NOFLUX" according to certificate No 1204103, "ZULBEX" according to certificate No 1026663.
• Trademarks "RALTEGRA" under certificate No 619481 and "Raltiko" under certificate No 1208534, active ingredient Raltegravir. Fantasy trademarks with the same active ingredient are "ISENTRESS" under certificate No 341025, "Tegvimel" under certificate No 1027574.

This list is not exhaustive. Of course, this practice is not applicable to all INNs in terms of trademark registration, but it is the most common.

Court practice

Next, we will consider several cases related to challenging the decisions of Rospatent and granting legal protection to trademarks under Class 05 of the Nice Classification in relation to INN.

Thus, based on the results of consideration of the objection filed against the decision to refuse to register the trademark "BOSENTAS" under application No 2018756385, the Board found the following: "Taking into account the above, the registration of the trademark "BOSENTAS", consonant with the INN "BOSENTAN" in relation to goods of class 05 of the Nice Classification and related services of Class 35 of the Nice Classification, will be contrary to public and public interests and the right of everyone to health protection and medical care guaranteed by Article 41 of the Constitution of the Russian Federation, therefore, contradicts the requirements of paragraph 3 (2) of Article 1483 of the Code. In addition, the claimed designation "BOSENTAS" requested for goods of class 05 of the Nice Classification that do not contain INN as an active ingredient (for example, bandages, insecticides, milk powder for children) can mislead consumers about the product, which can be harmful to health and lead to to dangerous social consequences (paragraph 3 (1) of Article 1483 of the Code)." Thus, the decision of Rospatent dated 16.12.2019 was upheld. (Conclusion of the Board of the Chamber for Patent Disputes dated October 13, 2020).

Another case concerns the trademark "KOMBIFIKIN" under certificate No 939238 and the trademark "BIFICIN" under certificate No 939238 (Conclusion of the Board of the Chamber for Patent Disputes dated July 22, 2024). Based on the results of consideration of the objection, the Board came to the following conclusion: "... the high degree of similarity of the marks and the high degree of homogeneity of the goods and services listed in the text of the conclusion cause a high probability of confusion of these goods and services in the civil circulation of the Russian Federation. At the same time, a high degree of similarity of signs in the absence of homogeneity of some goods and services will not lead to the danger of their confusion by the Russian consumer." Thus, the disputed trademark does not comply with paragraph 6 of Article 1483 of the Code in relation to part of the goods of class 05 of the Nice Classification, similar to pharmaceuticals, as well as in relation to part of the services of classes 35, 42 of the Nice Classification related to trade in medicines and medical research.

As a result of challenging the decision to refuse to register the trademark "Bromgecombe" in application No 2020748702, the Panel found the following: "The claimed designation "Bromgecombe" is confusingly similar to the opposite INN "Bromhexine", is associated with it as a whole, and, therefore, its registration as a trademark is contrary to the public interest and violates paragraph 3 of Article 1483 of the Code." Thus, the decision of Rospatent dated 18.11.2021 was upheld. (Conclusion of the Board of the Chamber for Patent Disputes dated October 03, 2022).

The above practice can be useful in forming a trademark registration strategy for class 05 goods, if this trademark is derived from INN. In addition, it is recommended to carry out state registration of the medicinal product with the Ministry of Health of the Russian Federation. in accordance with paragraph 1 of Article 28 of the Federal Law of 12.04.2010 No 61-FZ (as amended on 29.12.2025) "On the Circulation of Medicines": "The registration certificate of a medicinal product indicating the dosage forms and dosages shall be issued indefinitely, with the exception of the registration certificate of a medicinal product issued with a validity period of five years, for medicinal products registered for the first time in the Russian Federation."

The patent attorneys at Zuykov and partners are ready to advise you on trademark registration and protection, as well as provide comprehensive legal support in similar matters.