Have you ever thought about the risk of confusing the name of one pharmaceutical trademark to another and the problems that it could produce in the health of consumers?
Trademark lawyers daily deal with trademark names such as “CIPRALEX” (registered mark) and “CITRALEX”, (a proposed mark), peculiar terms which share both similar handwritten appearance and similar sound, being actually a registered trademark in Mexico for antidepressants (the first one) and the second, a proposed trademark that is under examination by Mexican Trademarks Office that intends to cover pharmaceutical products in International class 05, as well.
As with any trademark, using these pharmaceutical trademarks in a manner likely to confuse consumers, jeopardizes the goodwill of the trademark owner, threatens fair competition and might cause serious problems in the health of people as I will explain in this paper.
It is important to notice that, in what respects to pharmaceuticals there should not exist any confusion among prescription drug names, since according to the Food and Drug Administration, such confusion among similar drugs accounts for approximately ten percent of all reported medication errors and injures approximately 1.3 million people every year.
One example involved an eight-year-old boy who was to be treated for Attention Deficit Disorder with the drug methylphenidate but died after being prescribed and ingesting methadone, the opiate-based drug used to treat heroin withdrawal.
In light to the above, it is very important that each pharmaceutical trademark be different from others since they can help to enhance public health with assisting health professionals reduce medication errors, it will help consumers to choose and identify the ones that are right for them and provide manufacturers with the incentive to develop new pharmaceuticals and monitor the safety of existing ones.
We must take into consideration that the development of a trademark for a new pharmaceutical product is a complex process for companies, that most of the time involves several aspects such as legal, regulatory, linguistic, and marketing, in fact, many pharmaceutical companies follow a lengthy process for the selection of a trademark.
In fact, the timeline from development of a name to marketing launch can be lengthy, it is therefore advisable to commence the naming selection one to two years before this, to take in consideration all the involved factors.
The process of selecting the correct name of a pharmaceutical product begins frequently with the development by the company of several name candidates checked against databases of pending or registered trademarks for related products, some of them make a more detailed trademark search to eliminate names that might be confusingly similar to existing trademarks, and also to reject name candidates that can have unintended meanings or connotations in any of the languages where the product would be sold.
In addition to the above, some of the aspects that most companies should take into consideration by the time of choosing a trademark name, are the following:
Chemical Names and Generic Names.
A pharmaceutical has both a “chemical name” and a “generic name” adopted by national and international nomenclature agencies.
“Non property generic names”, are used to assist health care professionals in identifying the pharmacological properties of drugs and they are granted by the World Health Organization and under International Non Names System, since names of pharmacologically-related substances demonstrate their relationship by using a common stem, additional letters, usually as prefix, that are added to the stem to create the generic name.
In light to the above, as you can notice, there will always be a degree of built in similarity for International Non-Names for pharmaceuticals that are in the same class, since it is useful to help doctors in identifying the properties of a pharmaceutical product, fact that might cause certain problems to companies.
In Mexico, after the selection of a pharmaceutical product name, the company will need to acquire trademark registration for a long-term protection and enforcement.
Additionally, manufacturers must also obtain a marketing authorization to sell any medicine, being the authority in charge in Mexico, the Federal Commission for Protection against Sanitary Risk (COFEPRIS), which approves the names of medicines, referring to them as “distinctive names”.
DISTINCTIVE NAME BEFORE COFEPRIS.
The Federal Commission for Protection against Sanitary Risk (COFEPRIS), must follow the Health Law and the Health Regulations in Mexico, which mentions specific requirements and rules for distinctive names, for which we can refer as the most important:
- “Distinctive name”which is referred to the name or trademark assigned to a pharmaceutical product to distinguish it from others.
- Medicines in their use and marketing, must be identified by their distinctive and generic names.
- The distinctive name must not refer to the composition of the medicinal product or its therapeutic action, including the diseases, syndromes, symptoms.
- A proposed distinctive name can be rejected when it is confusingly similar or identical to a previous authorized pharmaceutical name, in which case the difference between the proposed name and the previous name should be at least three letters in each word.
Nevertheless, as yet, there is no clear link between the Mexican Industrial Property Law, the Health Law and their regulations regarding conflicts between registered trademarks and marketing authorizations or distinctive names, but pharmaceutical companies must take into consideration the criteria of both administrative authorities if they want to have a title of registration for a trademark and commercialize it in the market.
LIKELIHOOD OF CONFUSION BEFORE MEXICAN TRADEMARKS OFFICE.
In what respects to pharmaceutical trademark registration, Mexican Trademarks Office follows the same guideline to study other trademarks, i.e. it refrains from granting registrations to marks which are confusingly similar to registrations or applications covering the same or similar products, and in some cases, it might cancel trademark registrations that have been granted in error or that prove to be confusingly similar to senior marks used on the same type of goods.
Some courts have established certain guideline to analyze the likelihood of confusion between conflicting marks, as follows:
- The examiner in charge, by comparing trademarks must take into consideration graphic, sound and meaning aspects of the marks.
- The examiner must study conflicting trademarks as a whole, refraining from dividing or disregarding elements of the marks.
- Distinctive signs have more weight than descriptive or generic terms, which lack relevance in the analysis even if they are part of the trademark.
- In the case of composed trademarks, the courts have established that the word element has more weight than the design, and distinctive signs have more weight than descriptive of generic terms.
- When any part of the international non-proprietary name of the drug is included in conflicting pharmaceutical trademarks, the analysis should focus on the distinctive elements of the mark.
There are Mexican legal precedents establishing particular rules for the assessment of the likelihood of confusion between pharmaceutical trademarks, since in this case, likelihood of confusion should be minimal as it could jeopardize the health of consumers.
The double requirement for authorization and registration of pharmaceutical trademarks by two different administrative authorities causes that Mexican Trademarks Office examiners usually consider the three-letter rule when analyzing the similarity of trademarks for pharmaceutical products, although it is not mandatory for them, and on the other side, the Health Regulations do not require COFEPRIS to obligatory consider senior trademark registrations for pharmaceutical products when examining the similarity of distinctive names.
Pharmaceutical companies must take into consideration the involvement of two administrative authorities in the clearance of trademarks and commercial names for pharmaceutical products, and develop a wise and cost-effective registration strategy based on previous trademark searches and taking into consideration the other factors previously referred in this paper.
Registering a trademark has several benefits to pharmaceutical companies, since it will ensure that they can enforce their Intellectual Property Rights through customs authorities and the courts in the event of trademark infringement.
Being able to identify a pharmaceutical product by its trademark is also helpful to consumers in the rare event of an adverse reaction, and will help them to recognize the source of any problems they could have.
Pharmaceutical trademarks will facilitate legal action against counterfeits, since if they would be only marketed by their generic name, it would be difficult to know if a particular formulation is being counterfeited.
In conclusion, the road to bring a pharmaceutical trademark from its initial phase to market is often arduous, time consuming and expensive for pharmaceutical companies, nevertheless, since trademarks provide the best method by which pharmaceuticals can be safely prescribed and prescriptions be filled, the use of pharmaceutical trademarks in union with efforts to encourage health care providers to prevent the look alike or sound alike of pharmaceutical names, is far more likely to minimize medication errors than any other alternative.