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Pharmaceutical industry in Russia, Ukraine and in other CIS countries can be considered one of the most complex industries with a view to the management of intellectual property, as it involves complicated legal, regulatory, linguistic and marketing considerations.
It is worth mentioning that for many years the close connection between life sciences and intellectual property has been based mostly on patent protection. In the meantime, we see that the strategic importance of selecting and working with a strong pharmaceutical brand (choosing the right trademark) has been fully recognized by pharmaceutical companies. The development of a trademark for a new pharmaceutical product is a complex and complicated process, as there are numerous hurdles in the process that must be overcome.
Pharmaceutical trademarks are usually subject for thorough examination in likelihood of confusion by the Patent and Trademark Offices (PTOs) in the CIS countries, in comparison to trademarks filed for other goods and/or services. The rigorous approach of the Patent and Trademark Offices applies due to the fact that the consumer’s confusion as to pharmaceutical products can have serious and even irreparable consequences.
As a common rule in such countries as Russia, Ukraine, Kazakhstan, Belarus, Georgia, Armenia, Azerbaijan, Kyrgyzstan, Tajikistan, Turkmenistan, Uzbekistan and in Moldova, the trademark legislation protects not only manufacturers, but the consumers’ rights as well. We should note that the process of registration might sometimes be more complicated, compared to the EU, due to specific peculiarities of examination practice in each specific country of the CIS region.
The most common grounds of provisional refusals for trademark applications in “medical” classes, such as classes 05 and 10 of the NC, are relative grounds – the existence of prior trademark registrations with identical or confusingly similar verbal element(s) earlier applied or registered for homogeneous goods. For overcoming provisional refusals on relative grounds in some countries, it would be helpful to limit the list of applied goods to those, which have been manufactured, or to file the initial application indicating the exact goods for which the trademark is used or intended to be used.
In some countries like Russia, examination implies stricter approach to the similarity of trademarks. According to the Russian rules of examination, if the verbal element of an applied trademark is half or fully included in the already registered mark, it will be considered as confusingly similar. Protection in such cases can be gained only for trademarks with non-homogeneous list of goods and/or by providing a consent from the owner of the earlier mark.
In Kazakhstan similar word trademarks should have difference of at least in 3 letters in their verbal elements, in order to be able overcome the refusal based on existence of prior rights, using the argument on dissimilarity of trademarks and/or non-homogeneity of the list of goods.
Provisional refusals on absolute grounds, such as a misleading character of a mark or non-distinctiveness, are not so rare for trademarks in the medical sphere in the CIS as well.
Another aspect should be born in mind during the examination of medical trademarks on the possibility of misleading consumers as to the goods and their manufacturer and confusing similarity to prior trademarks: goods in class 05 of the NC – “pharmaceuticals for human” – are goods of conscious choice by consumers and rigorous examination by the PTOs. At the same time, the probability for these goods to be confused on the market is reduced due to the fact that the choice and purchase of the pharmaceuticals are assisted by specialists with professional knowledge and experience – doctors. Pharmaceuticals are prescribed on the basis of individual needs of patients. In this case, the name of the trademark and design of package would not be the main criteria for choosing of goods.
Pharmaceuticals for humans can only be sold through specific channels – pharmacies or drugstores. The choice of a particular pharmaceutical preparation by the average consumer is made with the assistance of doctors or sometime pharmacists in a pharmacy store. Doctors can certainly identify goods by many features – mainly the active components of the preparation and its manufacturer. A trademark is not the main criteria of choice in the case of pharmaceutical and veterinary preparation.
As a rule, the applicant select the name of his trademark with a view of the following aspects: the trademark may include a part of the name of an active ingredient, reflect a purpose of its use or may be a purely fanciful word. Some companies use part of the name of the active ingredient along with the company trade name. However, none of these approaches to choosing a trademark name can guarantee a successful registration.
With the aim to obtain a wider scope of trademark protection, it is recommended to file the application not only in Latin characters, but in the local language as well, especially where the indication of pharmaceutical preparation in local letters on the packaging is required by the country’s law (e.g. in Ukraine). The more cost-saving approach is to file one application, where the same trademark is indicated in different letters, e.g. in both Latin and Cyrillic script. However, in this case, it is necessary to direct attention to the use of the trademark in the view it is registered, to preserve from the risk of being a subject for a non-use cancelation action filed by a third party. Therefore, a broader scope of protection can be obtained through filing several applications to cover trademarks implemented in different alphabets separately.
Summarizing our experience in protecting trademarks in the medical sphere, we came to the following conclusions and consideration:
– as a good practice before applying for a new trademark, conducting a preliminary search on possible prior rights for similar marks with the aim of avoiding provisional refusals in the future is strongly recommended;
– when the title/name is being chosen for a trademark by an applicant, it is advisable to use some fanciful word or combination of name of a preparation with the name of a manufacturer; however try to avoid names, which have a low distinctive ability and are similar to the active ingredients of pharmaceutical preparations.
– if a trademark applied in class 05 receives a provisional refusal on relative grounds, such as close similarity by verbal elements and/or homogeneity of the list of goods in class 05, all obstacles associated with a particular case should be evaluated by an experienced trademark attorney, who would be able to provide recommendation on the reliable ways of obtaining trademark protection and the chances for success;
– one of the major arguments in the case of receiving a provisional refusal based on confusing similarities of pharmaceutical marks derives from peculiarities of the medical market. Pharmaceutical preparations are goods of conscious choice, however, the probability for these goods to be confused on the market is limited due to the fact that the choice and purchase of the pharmaceuticals are assisted by specialists with the required professional knowledge and experience.
– parallel to arguments in favour of dissimilarity of the mark set up in the objection, additional arguments related to the dissimilar focus of the parties’ activities and distribution channels, which prevent conflict on the market between the mentioned trademarks and voids the likelihood of confusion, as well as the evidences of trademark’s use should be available to the Examination;
– in a large number of cases, applied trademarks have minor differences (in one-two letters) with the opposed marks, thus a high range of similarity. In most cases, such provisional refusals could be overcome only by providing a letter of consent and limitation of the list of goods;
– litigation procedures for “medical” trademarks, as well as for any other trademarks, are quite complicated, especially in case of claiming misleading on the market. To protect the right to an IP object, it is necessary to provide a solid set of evidences of prior trademark use and the availability of the goods to consumers on a market.
We trust that provided overview of our experience, focused on characteristics of protection of trademarks for pharmaceuticals, would help trademark practitioners, as well as individual and corporate applicants to gain a better understanding of peculiarities of prosecution of “medical” trademarks on the CIS market, thus protect the rights for the “medical” trademarks more effectively
AUTHORS
Tatiana Lipovaya, Ph.D.
Head of Licensing Dept., Trademark Counsel for IPR GROUP
Tatiana joined the IPR Group in 2000 and worked as an expert consultant in licensing and franchising. In 2015 she rose to the position of Head of the IPR Group Licensing Department.
Tatiana holds a Ph.D. in Economics, and is an Associate Professor, Department of Finance at the State Academy of Statistics, Accounting and Auditing of the State Statistics Service of Ukraine and is a Member of the Ukrainian Association of International Economists.
She is also a Senior Expert at the Institute for International Business Development (IIBD), specializing in business development and finance, intellectual property rights protection, external resources management. She is fluent in English, Polish, Russian and Ukrainian.
Alyona Chernoknyzhnaya
Trademark Counsel for IPR GROUP
Alyona joined the IPR Group in December of 2013 and has since been advising clients on a wide range of trademark-related issues. As Trademark Counsel of IPR GROUP, she provides advice and assistance to clients in various aspects of trademark and copyright law in all countries of the CIS region.
Her expertise also includes prosecution on infringements of IP rights on the Internet and of domain names, caused by the use of a trademark or manufacturer’s website content without prior consent. Alyona enjoys traveling and oil painting, and speaks English, Russian and Ukrainian.
