Westmont Pharmaceutical, Inc. (“Westmont”) filed an opposition against the registration of the mark OMEZOLE in the name of Platinum Pharmaceuticals (PVT), Ltd. (“Platinum”) for use on “pharmaceutical preparations for the treatment of duodenal ulcer, gastric ulcer, gastro-oesophageal reflux disease (GERD) and management of Zollinger-Ellison Syndrome.” In September 2014, the Bureau of Legal Affairs of the Intellectual Property Office of the Philippines (BLA-IPOPHIL)) found the trademark “OMEZOLE” to be similar to the generic drug name OMEPRAZOLE and ruled that the mark was not distinctive for registration.
Westmont argued that OMEZOLE was similar to the generic drug name OMEPRAZOLE and as such could not be registered as it was in violation of Sec. 123.1 (h) and (j) of the Intellectual Property Code of the Philippines, which states that a mark cannot be registered if it:
(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;
(j) Consists exclusively of signs or indications that may serve in trade to designate the kind, quality, intended purpose, value geographical origin, time or production of the goods or rendering of the services or other characteristics of the goods or services
It should be noted that the World Health Organization (WHO) has published a list of official generic and non-proprietary names given to a pharmaceutical drug, known as the International Nonproprietary Names or INN. It is aimed at making communication more precise by providing a unique standard name for each active ingredient and to avoid prescribing errors.
The BLA issued a Notice to Answer to Platinum, however, no response was filed.
Based on the pleadings submitted, it was observed that both terms began and ended with identical letters, namely “O, M and E” and “Z, O, L and E.” The only noted difference was the absence of the middle letters “P, R and A” which were removed to arrive at “OMEZOLE.” As such, the mark used by Platinum was found to be non-distinctive for registration as it was a mere abbreviation of OMEPRAZOLE, an official generic name identified by WHO.
In view of the substantial similarity between OMEZOLE and OMEPRAZOLE, the BLA ruled that the mark OMEZOLE lacked distinctiveness and that allowing its registration would be in violation of Sec. 121.1 of the Intellectual Property Code of the Philippines which defines a “Mark” as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise”.
The BLA further ruled that the similarities were so obvious that the purchasing public could be misled into thinking that OMEZOLE and OMEPRAZOLE are one and the same, and as such, the registration of OMEZOLE was akin to permitting the registration of the generic term OMEPRAZOLE.
Pharmaceutical companies formulating trademarks should be cautious not to take a name which is identical or similar to a generic term. Otherwise, the proposed mark will not be allowed registration for lacking distinctiveness.
This article was first published in Law Lore & Practice, May 2015 Issue. For more information, visit http://ptmg.org/ .