Health technologies are developed through the application of organised skill and knowledge to create medical devices that improve the overall quality of life and solve health issues. Some common trademarked health technologies include the word ‘Panadol,’ and the Australian developed human papillomavirus (‘HPV’) vaccine, marketed as ‘Gardasil’ and ‘Cervarix.’ Trademarks have ensured that these products develop familiarity among consumers, and encourage consumers to recognise the products they know, like, and in some cases, need in order to solve health problems. Trademarks are of particular importance in the health technology industry as consumers develop substantial trust and loyalty specific to particular trademarks and develop an association with the trademark, the product, and the health benefits it offers.
The following explores various issues that are unique to trademarking within the health technologies industry.
Trademarks of descriptive nature
The Trade Marks Act 1995 (Cth) (TMA) governs trademark registration. It states that a trademark application must be rejected if the applicant’s goods or services (for which the trademark registration application is for) cannot be distinguished from that of another trademark (see s41). An example of this can be found in ‘word’ trademarks, which are not capable of being distinguished. This includes words that are descriptive, and could be used to describe the kind, quality or intended purpose of the product. Ultimately, descriptive marks must be reserved for the use of all entities that may want to use descriptive terms in relation to their product. An example may include an entity trading in health technologies and seeking to trademark ‘Pain Ease’ in relation to their product. This trademark may be rejected as these descriptive qualities will not be able to distinguish from other trademarks.
Trademarks must be distinct
Further, a trademark must be distinct from the goods or services with which it is registered, meaning that features which form part of the product itself cannot be trademarked. This issue was addressed in Smith Kline and French Laboratories (Australia) Ltd v Registrar of Trade Marks  HCA 42, where it was stated that ‘the mark is not the essence of the goods.’ In this case the Applicant sought to trademark the appearance (including the colour scheme) of its pharmaceutical capsules, and was refused registration on the basis that the mark could not be described as distinct from the capsule.
Trademarks must not be misleading
A complex issue that must be considered is that trademarks must not be misleading, or otherwise amount to passing off at common law. Misleading and deceptive conduct is primarily governed by section 18 of the Australian Consumer Law (Schedule 2 of the Competition and Consumer Act 2010 (Cth)). Here, it is stated that ‘a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive,’ which includes the use of puffery being wildly fanciful or exaggerated claims. Therefore, it is important for health technology ventures to not make unsubstantiated claims in their trademark, such as the use of the word ‘cure’ or use images that depict unlikely health benefits.
Trademarking in conjunction with Patents
Pharmaceuticals are often accompanied by other types of IP - particularly, patents. Patents have a limited life-span, whereas a registered trademark can exist for an extensive period of time. A common strategy in the pharmaceuticals space is to strategically utilise trademarks in conjunction with their patents. Here, during the patent life cycle, pharmaceutical companies may rely on the patent to create significant distinctiveness via extensive and exclusive use of a drug under patent, and by using their registered trademark in conjunction. When the patent expires, generic brands are free to enter the market. Often, the trademark used for a particular drug has become so intrinsically associated with that drug, that it artificially extends the monopoly of the expired patent. An example of this occurring can be found in the brand ‘Panadol,’ which appears to retain a monopoly over the paracetamol market, despite other generic brands being available.
Health technologies and digital technologies
We are rapidly moving into a new era of personalised health, aided by data science and computational biology. Technology companies have been able to capitalise on this change and, as a result, are moving into the health space. It is important to consider how changes in technology might alter the types of goods or services offered under a trademark when drafting the scope of goods or services for a health-tech brand. For instance, a company may be initially offering health based goods or services primarily, but information technology related goods or services may be relevant as rapid advancements are made in the health space and as the two industries increasingly overlap. However, there is a risk of removal of your trademarking in relation to such classes also if you don’t use the trademark in connection with the class of goods and services claimed, or have a genuine intention to do so. Nevertheless, in the case of Pioneer Computers Australia Pty Limited v Pioneer KK  FCA 135 the Court found that although non-use had been established, there was sufficient technological convergence between the classes sought to be removed due to non-use and the classes used, that warranted removal of only some classes.
The trademark owner is given exclusive right to use their trademark or authorise another person to use the trademark in relation to the goods and services with which it is registered (see s20 (1) TMA). Licensing is an efficient and effective way to use your existing intellectual property to expand your business or product offering, by allowing someone else to use it without having to forfeit control or ownership. We can assist you consider your best avenues to licensing your trademark to suit your needs.
In some instances, such as the HPV vaccine, health technologies are developed by researchers and later commercialised by pharmaceutical companies that have the capacity to distribute the product. Entities should consider the trademarks they intend to use at the outset of product development in order to ensure that any consumer association developed carries over with the product throughout the course of commercialisation.
The market for health technologies extends worldwide. As a result, it usually makes sense for a business to maintain its brand across jurisdictions. In the event you wish to trade internationally, we can assist you consider other jurisdictions where you should register your trademark.