Introduction
Legislative context
Comment


Introduction

Pharmaceutical trademarks often comprise a combination of elements (eg, prefixes, suffixes or commonly used words) that evoke the product's:

  • properties;
  • active ingredients; or
  • therapeutic function.

They may also refer to a component of the medicine or the organ for which they are prescribed.

Terms are considered commonly used if they:

  • form part of several trademarks; or
  • evoke the product or any of its features.

Any party may include commonly used terms in a trademark, provided that it cannot be confused with a mark owned by another party.

For example, 'corti' is a prefix commonly used in Class 5 trademarks. It evokes the active substance corticosteroid or the hormone cortisone. The prefix 'corti' exists in numerous registered trademarks owned by different owners (eg, CORTIFLEX, CORTIDERM 10, CORTIMED, CORTICREM and CORTIFENOL).(1)

Legislative context

According to the Court of Justice of the Andean Community, prefixes, suffixes, roots or endings commonly used in trademarks cannot be subject to monopoly or the exclusive use of a single party since they are common words whose use by the general public cannot be prohibited.

It has been argued that because the signs identify products which directly affect their health, consumers pay more attention when purchasing pharmaceutical products. This has been recognised in various National Institute for the Defence of Competition and Protection of Intellectual Property (INDECOPI) decisions. One such decision stated that:

in the case of pharmaceuticals [which refer] to the signs in question, it is reasonable to assume that the consumer, when purchasing such products, would make a close examination based on their needs.(2)

However, this argument is insufficient to dismiss the risk of confusion. Pharmaceutical trademarks that share commonly used terms and whose names are similar could confuse consumers either directly (ie, where a consumer purchases a product in the belief that they are purchasing another) or indirectly (ie, where a consumer purchases a product in the belief that it has a different commercial origin).

Comment

Therefore, pharmaceutical trademarks must include elements in addition to the common term, whether figurative or literal. Such additional elements should provide sufficient distinctiveness to identify and distinguish the product's commercial origin and avoid the risk of consumer confusion. Additional elements can also prevent the sign from being descriptive. An overly descriptive sign would be considered indistinctive and therefore unregistrable under Article 135(e) of Andean Community Decision 486.

For further information on this topic please contact Marietta Flores or Kelly Sánchez at OMC Abogados & Consultores by telephone (+51 1 628 1238) or email ([email protected] or [email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.

Endnotes

(1) The trademark examples given were listed in Resolution 0107-2010/TPI-INDECOPI, 13 January 2010.

(2) Resolution 0011-2009/TPI-INDECOPI from file 341709-2008.