Generic names in trademarks


Lim Eng Leong

International Nonproprietary Names (INNs) are recognised by the World Health Organization (WHO) as unique names to identify pharmaceutical substances or active ingredients that are globally recognised as public property.

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.

generic names, trademarks, pharmaceuticals