The registration of trademarks in relation to BASs and medicinal products from the point of view of the coexistence of similar marks
A comparative analysis of the legal institutions of BASs and medicinal products allows distinguishing between the concepts under consideration according to a composition, an action range, the final result of their application and other indicators. However, in practice, these categories of the products are quite often evaluated by consumers as being similar and identical, for which reason the risk of the confusion of the subject matters increases. The negative consequences of identifying the said categories are obvious. The first ones are the natural (most often) biologically active supplements that enter a human body. In turn, the medicinal products are capable of influencing the organs of people for the purposes of the prevention, diagnosis, treatment of diseases and subsequent rehabilitation. Replacing one concept with another, the consumer believes and expects that the result of taking a BAS will be the same as when using a medicinal product, but this is not the case. As a result, the person loses time during which the disease could have been cured at an early stage or avoided at all.
From the point of view of the legal regulation of the biologically active supplements and the medicinal products, the situation is no less confusing. On the one hand, creating, distributing and the quality control of the manufactured supplements and drugs are regulated by the particular normative acts that are independent from each other. Thus, there is fundamental Federal Law “On Circulation of Medicinal Products” in the medicinal product field, and the concept of the biologically active supplements is revealed in Federal Law “On the Quality and Safety of Food Products”. On the other hand, there are the fields, where possible confusing among the BASs and the drugs is not regulated sufficiently at the legal level. These fields are rightly considered to be the legislative gaps and they require an early improvement and elimination, due to the fact that they can and are used by unfair persons for the illegal purposes.
If to consider the registration of trademarks in relation to the BASs and the medicinal drugs from the point of view of clarity and isolation of these legal institutions, then the blurriness and the high probability of confusing them should be noted. The described situation is unfavorable both for the consumers and the fair right holders of the trademarks, and also for the third parties involved in the turnover of the products at the pharmaceutical market. Therefore, it seems rational and useful to study and describe the particular peculiarities of the means of individualization used in relation to the BASs and the medicinal products, and therefore the impossibility to register the similar trademarks for these products. It should be noted that Rospatent adheres to the similar position, and when considering the trademarks claimed for the registration in relation to the BAS and the medicinal products, it often refuses to register the one that is the later among two similar or identical means of individualization.
Is the similarity of the trademarks registered for the medicinal products and the BASs acceptable?
The legislator does not establish any specific requirements for the registration of the trademarks for the supplements or the drugs aimed at allocating such designations to a separate group. Thus, in general, the means of individualization claimed in relation to the BASs and the medicinal products must comply with the same conditions of patentability. As an exception, the inadmissibility of the protection in the form of a trademark for the medicinal product of the designation that is identical to an international nonproprietary name may be indicated.
At the same time, among the general provisions restricting the registration of the trademarks, there are also the ones that are aimed at reducing the risk of confusing among the BASs and the medicinal drugs. So, in accordance with Subparagraph 1 of Paragraph 6 of Article 1483 of the Civil Code of the Russian Federation: “The designations that are identical or confusingly similar to other persons’ trademarks claimed for the registration cannot be registered as the trademarks (Article 1492 of the Civil Code of the Russian Federation) in relation to the homogeneous products and the ones that have an earlier priority, if the application for the state registration of the trademark is not withdrawn, not recognized to be withdrawn or a decision on the refusal in the state registration is not made in relation to it”.
According to Paragraph 10 of the above Article, it is also not allowed to register the trademarks in relation to the homogeneous products that include the elements that are protected as the means of individualization of other persons or the designations that are confusingly similar to them.
It follows from the above mentioned normative provisions that the registration of the similar trademarks or designations containing as an element the means of individualization of another person in relation to the homogeneous products is prohibited. Therefore, if the BAS and the medicinal product are considered to be the homogeneous products, then the registration of the similar trademarks is not allowed. However, is it possible to talk about the homogeneity of the categories under consideration, if to take into account the fact that the peculiarities of the manufacture and distribution of the first one is regulated by the norms of Law “On the Quality and Safety of Food Products,” and the order of the manufacture and release to the commercial market of the second one is regulated by Federal Law “On Circulation of Medicinal Products”? Even referring these both kinds of the products to the 05th class of the ICGS is not, in fact, a sufficient basis for claiming that they are homogeneous. Thus, the Methodological Recommendations for determining the homogeneity of the products and services during the examination of the applications for the state registration of trademarks and service marks of Rospatent indicate that: “The adopted International Classification of Goods and Services (ICGS) for the registration of marks does not influence on the assessment of the homogeneity of the products and services”. As an example, it is possible to give the products referred to the already mentioned 05th class of the ICGS: deodorants and food supplements, which are obviously not homogeneous.
An explanation on this issue was given by the Intellectual Property Court during resolving a dispute on the termination of the trademark used in the field under consideration, due to its non-use. The Court pointed out in its decision to the following: “While establishing the homogeneity of the products, the following circumstances shall be taken into account: the nature (kind) of the products, their consumer properties and the functional purpose (the volume and the purpose of the use), the kind of the material, which they are made from, the complementarity or interchangeability of the products, the conditions for their sale (including the general place of sale, the sale through a retail or wholesale network), the circle of the consumers, the traditional or preferential way of using the products. ...The homogeneity shall be recognized in fact, if the products (services) due to their nature or purpose can be attributed by the consumers to the same source of origin.”
Taking into account the sales market for the BASs and the medicinal products, the methods and the place of their sale (mainly, pharmaceutical networks), as well as the result of their use expected by the consumers, it is possible to talk on the homogeneity of these products, and therefore, on the impossibility of the registration of the similar trademarks for these products.
Is it possible to register the similar trademarks in relation to the BASs and the medicinal drugs?
Despite the above facts, unfair companies still make attempts to register the similar designations for the use both in relation to the BASs and the medicinal products. The reasons for this are clear: the well-known designation allows saving money on advertising and it increases the consumer demand. As an example of the attempt to register the similar designation, it is possible to give filing the application for the registration of the trademark “VALEODICRAMEN” by Flora Kavkaza in relation to the product of the 05th class of the ICGS “sedatives”. Having considered the received application for the registration of the means of individualization, Rospatent refused to grant the legal protection to the said designation and it pointed out to the existence of the registered trademark “PHYTO TEA VALEODICRAMENUM” used in relation to the BASs that are also included in the 05th class of the ICGS. The representatives of Flora Kavkaza did not agree with the decision made and appealed against it trough the legal proceedings. Having considered the case substantively, the Court supported the position of Rospatent and pointed out to the possibility of confusing the compared products, as well as to the high degree of similarity of the designations, in connection with which it dismissed the plaintiff's claims.
Unfortunately, the available judicial practice shows that sometimes entrepreneurs still manage to get the legal protection in relation to the claimed designation, which is deliberately similar to the registered means of individualization. However, it should be noted that the right holders of the trademarks also pay increased attention to the protection of the designations owned by them and they quite often dispute the illegal registration of the similar trademarks.