Naming medical trademarks

Even if the trade name of a medicine is registered as a trademark, it may not be used for the medicine in question unless a marketing authorisation issued by the National Agency for Medicines and Medical Devices (ANM) is obtained or an authorisation issued under the centralised procedure.

In choosing the trade name of a medicine, the manufacturer will have to make sure, on the one hand, that the requirements of the specific legislation applicable to medicines for the obtaining of the marketing authorisation are met and on the other, that the use of a name does not violate other earlier IP rights.

The principles of the European Medicines Agency Guideline CPMP/328/98 Rev 5 on the acceptability of names for human medicinal products processed through the centralised procedure were adopted in the Romanian legislation by decision of the Scientific Council of ANM no. 2 of February 2008.

This statute outlines basic principles such as: the invented name of a medicine should not have deceitful therapeutic and/or pharmaceutical connotations; the invented name of a medicine should not be misleading as far as its composition is concerned; the proposed invented name of a medicine should not lead to confusion with the common name.

In addition to these, clear criteria are set for checking the potential likelihood of confusion, taking into account the following aspects: patient populations; pharmaceutical forms; routes of administration, concentrations; conditions of release and use; orphan drug status; and assessment of the potential harm that may be caused to the patient in case of confusion.

“OTHER COMPETITORS WILL BE TEMPTED TO USE THE SAME DESCRIPTIVE/ SUGGESTIVE ELEMENT, WHICH WILL LEAD IN TIME TO A DECREASE OF THE DISTINCTIVENESS OF THE TRADEMARKS AND IMPAIRED CONSUMER PERCEPTION.”

The obtaining of marketing authorisation (which basically supposes compliance with these criteria) does not automatically entail the admission for registration of that name as a trademark. There are situations when, although both medicine names have been approved for marketing, the courts decide that there is a likelihood of confusion between the trademarks.

This is possible, because the criteria for assessing the likelihood of confusion may differ, even if not fundamentally in our opinion (many of the criteria stated above and used by ANM are also relevant in assessing the likelihood of confusion between medicine names regarded as IP rights).

It is already known, based on experience, that when pharmaceutical companies create a brand, they are tempted to choose names which are descriptive for the therapeutic purposes of that medicine or highly suggestive. ‘Algo’, ‘Calmo’, ‘Magne’, and ‘Rheuma’ are just a few examples of components of suggestive trademarks.

The option of choosing a suggestive name as a trademark has advantages and disadvantages and it is extremely important to know these advantages and disadvantages in the process of selection/creation of the brand.

One of the most relevant advantages is that the trademark will be easily perceived and retained by the consumer and associated with the therapeutic purpose. The main disadvantage is that other competitors will be tempted to use the same descriptive/suggestive element, which will lead in time to a decrease of the distinctiveness of the trademarks and impaired consumer perception.

A decision passed by the Romanian High Court of Justice in 2010 (decision 3846 of June 18, 2010) on the dispute between the ‘Algocalmin’ and ‘Algozone’ trademarks stated that:

“The regular average consumer targeted by this category of products, even if they are identical, who perceives the trademark as a whole, only makes an association between the two trademarks, and this because of the identical prefix ‘algo’, without making a confusion regarding their origin and manufacturer. … The confusion is avoided because the common element, which obviously has a descriptive character, although at a lower level than the element ‘calmin’, is not able to confer, alone, distinctiveness to the earlier trademark.”

The conclusion stemming from the existence of such a complex regulation on the use of medicine names is that manufacturers will have to consider both perspectives (special legislation and legislation on industrial property rights) to ensure a fully legal use of the name.