The Supreme Commercial Court of the Russian Federation (the “SCC”) has issued a ruling of the Presidium of the SCC on a trademark dispute regarding the use of international non-proprietary names of the World Health Organization (“WHO”).

Circumstances of the case

Two Russian enterprises (the “Claimants”) own trademarks of the fifth class of the International Classification of Goods and Services (“ICGS”), which are formed from international non-proprietary names (the “Names” or “Name”), including the Name “carnitine”. The Russian trademark “Carniton” belongs to a third party and is registered for various products, including pharmaceuticals and dietary drugs under the fifth class of ICGS.

The Claimants requested that the Russian Agency for Patents and Trademarks (“Rospatent”) cancel the legal protection of “Carniton” in respect of the goods subject to the fifth class of ICGS. According to the Claimants, the respective trademark is associated with the “carnitine” Name and could mislead consumers as to the nature and manufacturer of the goods.

Rospatent dismissed the Claimants’ request, so the Claimants filed a court action; however, all three instances supported Rospatent and ruled that:  

  • the “Carniton” trademark is used on the packaging of dietary supplements, indicating that they are not pharmaceuticals;
  • the disputed trademark is a made-up brand name and is not associated with the “carnitine” Name; and
  • “Carniton” drugs are distributed on the herbal supplements market, which is not associated with the pharmaceuticals market; therefore, there is no confusion between these and the Claimants’ goods, and this may not be considered as unfair competition.

Ruling of the Presidium of the SCC

The SCC overturned the lower courts’ rulings and required Rospatent to cancel the registration of the “Carniton” trademark, stating that:

  • a Name is a unique and generally recognised name of a pharmaceutical substance awarded by WHO as a universal identifier of the active substances within drugs; and
  • a Name may be considered as a generally accepted term, and thus may not be registered as a trademark.

The Presidium of the SCC noted that WHO requires that its members not use Names (or any derivatives of such Names) as trademarks; and that such members will take measures to restrict the registration of any trademarks that are similar to such Names.

In overturning Rospatent’s decision, the Presidium of the SCC indicated that:  

  • the “Carniton” trademark is derived from the “carnitine” Name; therefore, it is confusingly similar, and its registration in respect of various goods (including pharmaceuticals) misleads consumers;
  • legal protection of the disputed brand may hinder the production and sale of pharmaceuticals of the “carnitine” group in Russia, as the trademark holder may forbid the use of any similar brand names for such goods; and
  • registration of the trademark prevents the free use of the Names in Russia, thereby infringing on the public interest and constitutional rights for health protection and medical treatment.

The ruling of the SCC restricts the registration of trademarks that are similar to pharmaceutical Names.

[Ruling No. 12436/11 of the Presidium of the Supreme Commercial Court of the Russian Federation, dated 28 February 2012, on case No. А40-66999/10-26-563, is available in Russian here (current instance: Presidium of the SCC)]