The pharmaceutical industry in Russia, Ukraine and 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 now see that the strategic importance of choosing 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 countries of our jurisdiction, compared to the trademarks applied for other goods and/or services. The more strict approach of the Patent and Trademark Offices is due to the fact that the consumer’s confusion as to pharmaceutical products can have serious and even irreparable consequences.
In our practice we have accumulated extensive experience in filing, prosecution and defending of trademarks under the national or international procedure in respect of pharmaceutical and veterinary preparations, medical tools, as well as have a number of successful litigation cases for trademarks in this sphere. Therefore, this article will share our experience, focusing on peculiarities of protection of trademarks for pharmaceuticals for humans in class 05 of the Nice Classification (further – NC). We will also consider some aspects of registration of the trademarks for medical products in class 10 of the NC.
As a common approach the trademark legislation in such countries as Russia, Ukraine, Kazakhstan, Belarus, Georgia, Armenia, Azerbaijan, Kyrgyzstan, Tajikistan, Turkmenistan, Uzbekistan and Moldova 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 following aspects 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.
The 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 (e.g. “Sopharma”, “Sanovel”). However, none of these approaches to choosing a trademark name can guarantee a successful registration.
Before filing an application it is strongly recommended to conduct the trademark availability search within the future jurisdictions with the help of local attorneys, as they are familiar with the requirements and rules of examination of national PTOs. For example, 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. In other countries, the only efficient solution might be providing a Letter of Consent.
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.
In some cases, for overcoming provisional refusals on relative grounds 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 case of initiation of the cancellation procedure for a trademark registration on the ground of non-use, authorizations for sales and marketing and extracts from the state registers of pharmaceutical preparations can be used as valuable sources of evidences to prove the fact of actual use/non-use of preparation in the country.
Below we would like to concentrate a bit more on the peculiarities of “medical” trademarks’ registration by reviewing most common absolute and relative grounds for provisional refusals and practical approaches for their overcoming:
PROVISIONAL REFUSALS ON RELATIVE GROUNDS
The most common grounds of provisional refusals for trademark applications in “medical” classes, such as class 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. We will hereby like to consider some cases in more detail:
- TM Combiflox, UA
TM Combiflex IR 1072270, filed by JW LIFE SCIENCE CORPORATION (KR), was refused registration in Ukraine, as it was considered by the Examination to be confusingly similar to TM Комбіфлокс (Combiflox in Cyrillic letters), Certificate of Ukraine No 144427. We should note that IR 1072270 has been applied for the rather specified list of goods and actually is used for parenteral nutrition targeted to a very specific circle of consumers after operations or injury of the digestive system, while the opposed trademark was registered for pluripotent antibiotics, without actual use in Ukraine.
Argumentation in favour of dissimilarity of trademarks and dissimilar circles of consumers gave us the opportunity to overcome the refusal in Ukraine.
In the meantime, such a strategy could not be proposed for similar cases in Russia, where the only possible solution is to provide a Letter of Consent. We should note that holders of the opposed registrations might not agree to give consent to the registration of similar designations in class 05 in the CIS countries. However, they might be more inclined to grant consent in order to avoid attempt of cancelation of their trademarks, especially on the grounds of non-use.
- TM Bifidolakt, UA
TM “Bifidolakt” of Valentis UAB (LV), was provisionally refused at the substantive Examination stage in Ukraine, due to the existence of confusingly similar TM БІФІДУМЛАК (BIFIDUMLAK in Cyrillic Character), Certificate of Ukraine No. 83692, owned by “Lekhim” (Ukraine), registered for the goods in class 05.
The provisional refusal was overcome through insistence on the dissimilarity of the trademarks by visual and phonetic criteria, as well as mentioning the low distinctive ability of elements BIFIDO and LACTO as to the probiotic products. Another supporting argument was that the information about the pharmaceutical “БІФІДУМЛАК” was absent in the list of goods produced by “Lekhim”, as well as in the State Pharmaceutical Register of Ukraine, where all pharmaceuticals for people are registered.
- TM Results Nutrition Co., UA
IR 1256770 TM , filed in the name of Benepha, Inc. (US), was refused in Ukraine for all goods applied for in class 05, because it was considered by the Examination to be confusingly similar to TM , Certificate № 117865, owned by Piedmont Pharmaceuticals (US), earlier registered in Ukraine for goods in class 05.
The subject refusal decision was also successfully overcome by filling the Objection, based on the arguments in favour of dissimilarity of applied and opposed trademarks by visual, phonetic and semantic criteria, as well as the different focus of the parties’ goods and activities. Under the opposed TM RESULTZ products for the treatment of head lice is sold, while TM is applied for dietary and nutritional supplements; vitamin preparations, etc.
- TM Phiten, UA
IR 1376019 TM (applicant – PHITEN Co., Ltd. (JP)) was partially refused in Ukraine for all applied goods in class 05, because it was considered by the Examination to be confusingly similar to the following marks: TM , IR 823512, and TM PHYTIN, IR 745725, both owned by AKTSIONERNO DROUJESTVO “SOPHARMA” (BG), earlier registered in Ukraine for goods in class 05.
The provisional refusal was successfully overcome by filling the Objection based on arguments in favour of dissimilarity of applied and opposed trademarks by visual, phonetic and semantic criteria.
In our objection, we also referred to the different focus of the parties’ goods and activities, as the applied mark is used for titanium tapes and other wellness-related products, while the opposed marks are used for the preparation for regulating phosphorus-calcium metabolism. In this regard, the goods under the applied and opposed trademarks have different purposes of use, so the possibility of misleading the consumers is reduced.
- TM Regard, UA
The IR 771745, TM of Vita Research S.r.l. (IT) was partially refused in Ukraine for applied goods in class 05 and 10, because the mark was considered by the Examination to be confusingly similar to TM , Certificate No. 82033, owned by LLC «REHARD» (UA), earlier registered in Ukraine for goods in classes 05, 10 and services in class 44.
There is obviously a considerable range of similarity of the marks in question, especially by a phonetic criterion, as their dominant verbal elements are identical, though the opposed mark is implemented in a stylized font with graphic implementation.
Nevertheless, in the objection, we provided all reasonable arguments on the disparate focus of the parties’ business activities and goods, targeted consumers as well as distribution channels, as the applicant uses the mark for a solution for contact lens care, while it was revealed in open sources that the counterparty uses the mark for dental materials and equipment.
Furthermore, we suggested to limit the list of the applied goods to the specific goods for which the mark is actually used in Ukraine. The limitation of goods could be an important step in trademark prosecution, which is allowed in case of refusal to increase the chances for successful outcome, especially where the mark is initially applied for a broad scope of goods or generally formulated items.
- TM Reset, UA
Another TM of Vita Research S.r.l., IR 1404562, was also partially refused in Ukraine for the applied goods in classes 05 and 09, because it was considered by the Examination to be confusingly similar to the following trademarks:
TM Reset IR 1097275, owned by Low Lands Laboratories B.V. (NL), earlier registered in Ukraine for goods in class 05, 32 and 33.
TM , Certificate No. 78574, owned by an individual, earlier registered in Ukraine for goods in class 09 and services in classes 37 and 42.
Despite the stylized implementation of the applied mark, the word RESET is readable and is phonetically identical to the opposed marks. It worth to remember that the likelihood of confusion is first of all estimated by the Trademark Office as to the similarity of the verbal elements of the conflicting marks, in which, in their opinion, the attention of the consumers is primarily focused.
This time, we built our arguments on the fact that the applicant uses the mark for eye drops, while owner of the first opposed mark, Low Lands Laboratories B.V., develops and sells nutritional supplements, and the holder of the second opposed mark was registered as an entrepreneur with a main business activity in the repair of computers and peripherals.
Accordingly, in both aforementioned cases, we insisted that the likelihood of confusion among the relevant circles of consumers is low and also, despite the range of similarity of the marks in question, they still create a different overall impression.
This approach was successful and both trademarks were registered for all applied goods in Ukraine.
- TM Hemoplast, UA
IR 1332291, TM , filed in the name of LLC “SOPHARMA KAZAKHSTAN” (KZ), was partially refused in Ukraine for all applied goods in class 10, because it was considered by the Examination to be confusingly similar to TM (Hemoplast in Cyrillic), Certificate of Registration No 35603, and TM , Certificate of Registration No 35604, both owned by Public Joint-Stock Company “Enterprise for the production of medical products made of polymeric materials “HEMOPLAST ” (UA), earlier registered in Ukraine in respect of goods in class 10.
We have analyzed the list of applied goods in class 10 and revealed that it is possible to identify non-homogeneous goods and to limit them, as the registered goods under the opposed trademarks in class 10 are quite narrow relate mostly to drainage and blood infusions.
Keeping in mind the goods for which the applied trademark is used, we estimated the possibility to limit the list of applied goods in class 10 as well as the chances for success in filing an objection grounded on the non-homogeneity of the list of applied goods of the same class due to the limitation of the goods. Goods limitation, made by deleting some goods from the list, can be done in Ukraine at the stage of filing the objection, without the need of applying to WIPO.
We also provided documentary evidence of the applied trademark use in respect of the limited range of goods in class 10 in Ukraine, which proved the existence of certain circles of consumers, who can recognize these goods offered under the applied trademark.
The best evidences which can be used in the course of preparing an objection are promotional and advertising materials (catalogues, brochures), publications in the media, information about participation in expo shows in Ukraine and abroad (any diplomas, awards, participation certificates etc.) invoices, contracts, price lists, etc.
As a result, an objection with the following goods in class 10 -“artificial limbs, eyes and teeth; orthopedic articles, plastic bandages; suture material” was drafted and filed to the Ukraine Patent Office and protection was granted to the applied mark for the limited list of goods.
- TM Voyager, UA
Another trademark in class 10 – TM VOYAGER IR 1300861 of Novartis AG (CH) was refused in Ukraine for all applied goods, because it was considered by the Examination to be confusingly similar to TM , Certificate of registration No. 100199, owned by individual (UA), earlier registered in Ukraine for the similar goods in class 10.
Having analyzed the ground for refusal, with the aim to obtain trademark protection, it was recommended to file an objection grounded on some visual and phonetic differences between the marks, giving special emphasis to the specific of use of goods in class 10, such as surgical apparatus and instruments, which are goods of conscious choice and thorough examination. The probability for these goods to be confused on the market is limited due to the fact that their choice and purchase are made by professionals in the field of medicine, assisted by specialists with professional knowledge and experience through selected distribution channels.
For such types of medical goods, consumers usually make their choices not only by the trademark, but mainly by the professional features of these goods with a targeted medical applicability in surgery. Supporting documentation (user manuals, technical guidance, instructions) and information on the source of origin, which are always available through the distribution channels, allow customers to accurately identify the manufacturer.
We succeeded in convincing the Examination, and the Trademark obtained protection for the applied list of goods in Ukraine.
In contrast to Ukraine, the examination in Russia implies stricter approaches 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.
- TM Tuvero, RU
We can mention IR 1316316 TM TUVERO of BORYUNG PHARMACEUTICAL CO., LTD. (KR), which was refused in Russia for all applied goods in class 05, because it was considered to be confusingly similar to IR 1210232 TM MUVERO, owned by EGIS Gyógyszergyár Zrt. (HU), earlier registered for goods in class 05.
The verbal elements of the marks were different by only one letter, which is considered as a high range of similarity by a phonetic criterion, in the absence of vivid semantics and also without any stylized implementation and graphic elements. Though the latter might not significantly influence the understanding of similarity of the marks, as again the verbal elements are first of all are taken into consideration by the Examination.
Therefore, we initially estimated the chances of success as limited with arguments based on the similarity of the marks in question. However, on the client’s request, the objection with all reasonable arguments we prepared and filed. The response of the Examination was predictable – with the refusal in protection.
It is also important to note that in Russia arguments on the actual use of the marks in question and the dissimilar business focus of their owners have less effect on the chances to convince the Examination to waive the citation.
- TM Aluminaid, RU
IR 1177056 TM , filed in the name of Aluminaid International, AG (US), was refused in Russia for all goods in class 05, because it was considered by the Examination to be confusingly similar to TM (Alliance drugstore written in Cyrillic script) Certificate № 318370, owned by Alliance UniChem plc (GB), earlier registered in Russia for goods in class 05.
Both trademarks contain similar figurative element, however, dominant verbal elements were quite different. Thus, the refusal was overcome by a grounded objection based on arguments in favor of the dissimilarity of the applied and opposed trademarks by visual, phonetic and semantic criteria.
- TM Estmar, MD
The examination in Moldova is famous for its tough rules, where it is near impossible to obtain protection for a similar mark, which differs from the opposed mark by even 2-3 letters, sometimes having some phonetic or graphic dissimilarity.
As an example, IR 1131973 TM ESTMAR of Zentiva Group, a.s. (CZ) was refused in Moldova for all goods applied for in class 05, as it was considered by the Examination to be confusingly similar to IR 158999B TM EASTMAN owned by EASTMAN CHEMICAL B.V. (NL), earlier registered in Moldova in class 05.
Applied TM ESTMAR is used for contraceptive preparation while the coating material for pharmaceutical preparations was offered by the right holder of the opposed registration under TM Eastman.
Bearing in mind the disparate trade and distribution channels, different targeted consumers, and dissimilar focus of the parties’ goods, the marks in question were not likely to cause confusion and therefore, could coexist in the market place. Bearing in mind above-mentioned argument, the right holder of the opposed registration agreed to issue the Letter of Consent to the applied trademark for the restricted list of goods, which helped to overcome the provisional refusal successfully.
- TM Lidoplus, KZ
IR 1046181 TM “LIDOPLUS”, filed in the name of VANDECAUTER Eric (BE), was refused in Kazakhstan for all goods in class 05, as the mark was considered by the Examination to be confusingly similar to TM LIPOPLUS IR 635753 owned by B. Braun Melsungen Aktiengesellschaft (Germany) earlier registered in Kazakhstan for goods in class 05.
Bearing in mind high range of similarity of the trademarks in question by visual, phonetic and semantic criteria, and therefore, high level of confusability for consumers, we proposed to use not only arguments in favour of dissimilarity but also the limitation of the applied list of goods.
Considering the fact that the owner of the opposed registration specialized in clinic nutrition, in particular the trademark LIPOPLUS was registered and used only for the preparations of parenteral nutrition, whereas the spray and tablets produced under TM Lidoplus were used for throat-disease treatment, we limited the list of applied goods in class 05 to “throat-disease treating preparations” and successfully overcame the refusal.
When filing an international trademark application under the Madrid system with territorial extensions to the countries of the CIS region, there is a risk of facing a series of refusals, like in the case with trademark DEAVIT in Kazakhstan, Tajikistan, Kyrgyzstan and Azerbaijan.
- TM Deavit, KG, KZ, AZ, TJ
TM DEAVIT IR 959653, applied by Sopharma (BG), received a number of provisional refusals in the cited above countries due to presence of earlier registrations for TM DUOVIT or TM “ДУОВИТ” (DUOVIT in Cyrillic), registered as national or international trademarks in class 05, owned by KRKA (SI).
The most reliable way to overcome the mentioned obstacles for registration was to provide letters of consent from the holders of prior rights, with the limitation of some goods in class 05. Thus, the applied goods were limited to “pharmaceutical preparations intended for eye drops for the treatment of disease in pediatrics” in the applied mark and the letter of consent had been obtained from the holder of the opposed registrations and submitted to the Offices in he countries.
The proposed approach was successful and the protection was granted to the trademark in the above-mentioned countries for the limited list of goods.
PROVISIONAL REFUSALS ON ABSOLUTE GROUNDS
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.
- ТМ Liticon, RU
TM , IR 1048594, filed in the name of Meda AB (SE), which is actually used for pediculosis treatment, was refused in Russia for all goods, as it was considered by the Examination to be misleading consumers as to the type, composition and intended use of the goods, as “liticon” is the name of a pharmaceutical psychotropic drug. Also, the figurative element of the applied trademark is an indication of lice treatment products, which was false as to the rest of the applied goods.
Bearing in mind that “liticon” is the name of a pharmaceutical psychotropic drug mentioned in the so-called “green list”, such a refusal could only be overcome by means of proving the fact that the applicant is the actual producer of “liticon” – a psychotropic drug. As under TM Liticon only the lice-treatment preparations were produced, the chances to overcome the refusal were limited and the trademark was totally refused in protection in Russia.
- TM Lethe, RU
IR 1131975, TM LETHE, of Zentiva Group, a.s. (CZ) was refused in Russia for all applied goods, as it was considered by the Examination to have no distinctive ability, as it is a commonly used term in the field of the applicant’s activities. This term is translated in many dictionaries as “forgetfulness”, “loss of memory” and “amnesia”. Therefore, according to the Russian Trademark Law and Rules of Trademark Examination, the trademark was considered ineligible for protection in Russia.
With aim to overcome the refusal, limitation of goods up to “pharmaceutical preparations for human use, particularly contraceptive preparations” was undertaken. We also filed an argumentation in favour of the fanciful character of this word in respect to the applied goods, contraceptive preparation. We also drew the attention of the examination to the fact that medical terminology was unified, in order to be understood by specialists worldwide merely conversant with the Latin Language
The words that can be regarded as the most suitable for medical terminology, are the words that are accepted by most specialists, understood by all and reflect the essence of the phenomenon or object.
LETHE has different meanings, and is translated in Russian as a mythological Greek character and a river of the same name. Also, none of the specialized terminological medical dictionaries gives the definition of LETHE as amnesia, and actually none of these dictionaries contain the word LETHE at all.
And so, we insisted on the fact that term LETHE has no meaning in respect to the applied goods, and can be registered. The Examination accepted our arguments and issued a positive decision.
- TM Enzola, RU
IR 1131814 ТМ ENZOLA, filed in the name of Zentiva Group, a.s. (CZ), was refused in Russia for all goods, as it was considered by the Examination to have no distinctive ability, as the verbal element “ENZOLA” was considered by the Examination to be misleading to consumers as to the origin of the goods, as Enzola is part of the municipality of Poviglio, in the province of Reggio Emilia (Italy).
As Enzola is a very small settlement with a population of 162 people, and therefore Russian consumers are not well aware of the fact that it is a geographical name of a municipality in Italy, we based our objection on the fact that the purchasing public would rather comprehend it as a fanciful than geographical name. The provisional refusal was successfully overcome.
Litigation practice in respect of trademarks in class 05 is also quite complicated and depends on a type of litigation procedure.
According to Ukrainian legislation, when a trademark is not in use for 5 years, it could be a subject for non-use cancellation. The case with «ДОЛОКСИБ» trademark could be quite representative.
- TM «Долоксиб», UA
IR 1191909 TM , filed for registration by Zentiva Group, a.s. (CZ), was refused in Ukraine for all goods in class 05, because it was considered by the Examination to be confusingly similar to TM Certificate № 119564 and TM Certificate № 123298, both owned by TOV “KONARK INTELMED” (UA) and earlier registered in Ukraine for goods in class 05.
The range of similarity of the marks in question was estimated as rather high and the applicant (Zentiva Group, a.s.), decided to proceed with the cancelation of the opposed marks on the ground of non-use in Ukraine. First, the cancelation lawsuit was filed against TM , as according to the results of the non-use investigation, the information which confirms the use of the opposed mark in Ukraine by TOV “Konark Inter Limited” or by third parties wasn’t revealed.
As for TM , it was revealed that a medicine called “DOLOXEN”, (1% gel per 30 gram in tubes; FG – nonsteroid, anti-inflammatory medicine with diclofenac sodium as an active substance), was registered and used in Ukraine under Certificate No. UA/6727/01/01; manufacturer – Agio Pharmaceuticals Ltd., India. The certificate was valid from 23.07.2007 till 23.07.2012 (at present the registration has not been extended). This information was also confirmed in the letter from the Ministry of Health of Ukraine. Thus, there was a risk that TOV “Konark Inter Limited” had concluded the license agreements with third parties for the use of the above mentioned trademark.
It should be noted, that despite the fact that the burden of proof laid solely on the defendant, along with filing the lawsuit, the plaintiff should also provide its own argument in favor of the non-use of the mark, which was the subject for cancelation. For this purpose, the appropriate request as to the use of the mark should be filed with the government and non-governmental authorities in Ukraine.
The list of authorities, to which requests can be filed, depends on the class of goods and/or services, for which the trademark is registered. If the trademark is registered for pharmaceuticals of 05 class of the Nice Classification, the following requests can be submitted:
– request to the Ministry of Health of Ukraine, in order to find out if the medicinal product under the subject trademark has been registered in Ukraine;
– request to the UPTO in order to reveal whether any license agreement was registered for the subject mark in Ukraine. However, it should be noted that the state registration of a license agreements is not compulsory in Ukraine;
– request to the Association of Article Numbering “GS1 Ukraine”, in order to reveal whether any barcodes were assigned to the goods under the subject mark;
– request to the Ministry of Economic Development and Trade of Ukraine with the aim of discovering if any Certificates of Conformity were issued for the goods under the subject mark, etc.
In some circumstances, there may be a justifiable reason why the mark cannot be used. For example, if the mark is to be used in relation to a pharmaceutical product and approval for the pharmaceutical has been sought in good time from the appropriate regulatory authority, but has not yet been granted, this may be accepted as a valid reason for non-use. However, if product bearing the mark simply was not available on the market, this would not be a valid reason.
As a result of the cancelation action, the opposed TM Certificate № 119564 was canceled in Ukraine on the ground of non-use.
The provisional refusal for IR 1191909 TM was successfully overcome through filling an Objection based on arguments in favour of the dissimilarity of the applied mark and opposed TM , as well as arguments in favour of the fact that goods in class 05 – pharmaceuticals for people – are goods of conscious choice and through examination, the probability for these goods to be confused is reduced by the fact that the choice and purchase of pharmaceuticals are assisted by specialists with professional knowledge and experience. We also informed the Examination that TM was canceled and didn’t prove an obstacle to the registration any more.
Sometimes, cancelation on the ground of non-use is the only possible way to overcome a refusal. However, even if the preparation is no longer in use or the trademark registration has expired, the examination still considers its possibility of misleading consumers. For example, according to the Ukrainian provisions of Law, an expired trademark will be considered an obstacle for the registration of other similar trademarks within 3 years after the date of its expiration.
Another informative litigation case, but on such ground as possibility of misleading customers on the market as to the producer of goods, based on the provisions of Law of Ukraine ”On protection of marks for goods and services”, was concluded recently. This case is an example of the complicated approach of focusing our legal position on different efforts and directions with the aim of obtaining protection in Ukraine.
- TM Hepcarsil, UA
As a distinctive case we can mention IR 1321959 TM , filed for registration be LLC “SOPHARMA KAZAKHSTAN” (KZ), which was refused in Ukraine for all applied goods in class 05, because it was considered by the Examination to be confusingly similar to the following trademarks:
– TM , Certificate of Registration No. 171032 owned by KONTSERN STYROL (UA), earlier registered in Ukraine for similar goods in class 05;
– TM , Application No. m201616128, and TM , Application No. m201615698, both filed in Ukraine for similar goods in class 05 by Pharmaceutical Group Zdorovya (UA);
– TM HEPCARSIL, IR 1176251, owned by SOPHARMA AD (BG), earlier registered for goods in class 05.
– IR 631628, TM KARSIL, owned by Aktsionerno Droujestvo “SOPHARMA” (BG), earlier registered for similar goods in class 05;
– IR 767874, TM CARSIL, owned by Aktsionerno droujestvo “SOPHARMA” (BG), earlier registered for similar goods in class 05.
Obstacles for the registration IR 1176251, IR 767874 and IR 631628 were easily overcome, as the applicant, LLC “SOPHARMA KAZAKHSTAN” is an affiliated company to AD “SOPHARMA”, the holder of the cited marks. Arguments based on the business connection between the parties were provided in the objection, supported by a letter of consent and the Extract from the company commercial register.
It is worth noting that trademark IR 631628 had not been valid from 28.02.2015. However, according to the Trademark Law in Ukraine, no one, but the holder of the already expired registration, has a right to file an application for an identical trademark, within 3 years after the date of expiry of the registration from the previous registration.
National applications mentioned in the refusal at that time were at the stage of substantive examination from May, 2017. In accordance with the article 10 of the Trademark Law of Ukraine, any person has the right to submit to the Examination, a grounded objection against a pending application, as the opposition is not envisaged by the Law for national applications. The examination considers an objection if it has been received no later than five days prior the date of making a decision on the application.
The usual timeframe for a substantive examination in Ukraine is about 6 months, and so there was a possibility to file objections against the pending application. As a result, both objections were accepted by the examination and provisional refusals, and after that the final decision with refusals were issued for the subject applications.
Considering the fact that IR 1176251, TM HEPCARSIL, and IR 767874, TM CARSIL, are held by AD “SOPHARMA” in Ukraine, we recommended to file oppositions to the Examination grounded on the confusing similarity of the applied designations with the already registered trademarks in the name of SOPHARMA in Ukraine. Our arguments were accepted by the Examination and both opposed applications were refused protection in Ukraine.
With the aim to overcome such obstacle for registration as the Certificate No. 171032, it was decided to file a lawsuit based on non-compliance with the trademark registration criteria/ misleading on the market. The lawsuit was grounded on the prior rights of SOPHARMA on IR 1176251, IR 767874 and IR 631628.
When initiating litigation based on non-compliance, a major condition is to provide sufficient evidence of use of goods under the applicant’s trademarks, which were available on the market in Ukraine before the date of filing the conflicting trademark. Since SOPHARMA had been present on the market of Ukraine within 20 years, the fame of the manufacturer and his widely used product “Carsil” were taken into consideration by the court.
During the trial, the Examination assigned by the court also confirmed close similarity of the trademark under the certificate No 171032 with earlier registered marks of SOPHARMA in Ukraine. Thus, establishing the existence of a possibility of confusion and misleading among consumers on the market.
Based on prior rights, evidences of use and the results of the examination, the court made a decision to cancel the validation of the above-mentioned certificate in Ukraine.
As a summary of 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;
- as our practice testifies, approaches of the Offices are constantly changed and developed. Due to our extensive experience, while filing objections to the provisional refusals, as an additional argument, we could attract the attention of the Examination to the similar successful cases in our practice, with the aim to strengthen the position of the client. However, for medical trademarks, the examination applies more conservative approach;
- 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 comprehensive overview and analysis of cases will help trademark practitioners, as well as individual and corporate applicants to gain a better understanding as to the peculiarities of prosecution and litigation for “medical” trademarks on the CIS market, thus protect the rights for the “medical” trademarks more effectively.