Generic names in trademarks
These generic names or their common stems cannot be registered as trademarks, in order to avoid confusion and jeopardising public health and safety. However, in Leo Pharmaceutical Products v. Kotra Pharma, the High Court held that the Malaysian Trade Marks Act does not specifically prohibit the registration of trademarks that are INNs or confusingly similar to INNs. This is unlike Section 13(b) of the Indian Trade Marks Act, for example.
In this case, the defendant (in a trademark infringement action) counterclaimed to rectify and expunge the plaintiff ’s trademarks for Fucidin and Fucicort, which were registered for pharmaceutical and veterinary preparations.
One of the grounds raised by the defendant was that these two marks should not have been registered since they bear deceptive or close visual and aural resemblance to the generic names ‘fusidic acid’ (the active pharmaceutical ingredient (API) in the plaintiff ’s products) and ‘corticosteroid’. The plaintiff did not dispute the API but responded that the INN guidelines do not form part of the Trade Marks Act and are therefore inapplicable.
“A trademark cannot be directly descriptive but it need not be absolutely unsuggestive."
Briefly, the court held that the INN should prohibit, if anything, fusidic acid and corticosteroid rather than Fucidin and Fucicort. This is because the latter two are not, in the words of the Trade Marks Act, “the commonly used and accepted names of any single chemical element or compound”. The word ‘fusidic’ cannot stand alone, as the commonly used and accepted term for the API in the Fucidin product is fusidic acid and not Fucidin.
Instead, the plaintiff ’s Fucidin and Fucicort function as trademarks distinctive to the plaintiff. This was supported by the ample evidence from licensed pharmacists and the authoritative medical and pharmaceutical literature tendered in court.
The defendant contended that the plaintiff uses Fucidin in a descriptive manner; for example, stating on the instruction inserts that the cream or ointment is “fucidin-sensitive”. The plaintiff argued that this was due to a mistake, which has since been corrected.
As for the defendant’s claim that the plaintiff’s trademarks are too close to the INN and so deprive generic manufacturers of their rights to use the generic names for their products, the court held that there was no unlawful interference with trade as the plaintiff was prepared to accept the use of fusidic acid by the defendant.
Moreover, the court found the marks as a whole to be portmanteau words, i.e. words coined by blending two dictionary words. Although INN is generic in nature and cannot be monopolised, this does not prevent pharmaceutical trademark applicants from adopting names that allude to INNs or compounds found in the drug (for example, Amoxil from amoxicillin and Vancocin from vancomycin).
A trademark cannot be directly descriptive but it need not be absolutely ‘unsuggestive’. A term can acquire a secondary meaning or perform a dual function to show the characteristics of the goods (for example, Fucidin containing fusidic acid) and, at the same time, indicate trade origin.
Until there is statutory enactment, WHO’s INN guidelines cannot become part and parcel of Malaysia’s Trade Marks Act, and companies can continue to choose marks based upon pharmaceutical compounds, provided there is no risk of confusion.
Lim Eng Leong is in-house legal counsel at Henry Goh & Co. Sdn. Bhd. He can be contacted at: engleong@henrygoh.com
