1 October 2015Jurisdiction reportsIsik Ozdogan and Ezgi Baklaci

Turkey: Trademarks for the pharmaceutical sector

Regulatory requirements also apply when selecting a trademark. Despite the sector’s special needs and characteristics, it is disappointing that the similarity examination for pharma trademarks is still not yet settled in Turkey.

In recent years, the Appeal Court and the Turkish Patent Institute (TPI) have at times applied a two-stage reasoning process during similarity examinations on pharma trademarks:

(1)   The consumers of the intended trademarks (doctors and pharmacists) pay a high level of attention; and

(2)   Therefore, since pharma preparations are sold only with a prescription, small changes might be enough to overcome similarity or the likelihood of confusion.

However, this reasoning has not been universally accepted by the TPI, or the courts. In many cases, examination of similarity for pharma trademarks has simply involved applying the TPI’s general guidelines. Recent decisions by the TPI and Appeal Court show the reasoning above is applied to trademarks which contain the INN code or make reference to the active ingredient.

Many Appeal Court decisions hold that the earlier trademark owner which registers a trademark very similar to the active ingredient or INN code should tolerate the use of similar trademarks derived from the same active ingredient or INN code.

For example the Appeal Court allowed the trademark ‘Amreks’ by finding it not similar to the earlier trademark ‘Ambridex’, despite both trademarks being derived from the same active ingredient, ambroxol. The Appeal Court allowed the later trademark on the basis that both trademarks are intended to be used on prescription drugs. Accordingly, it reasoned they both appeal to a consumer group with a high level of attention.

Uncertainty for pharma

However, the reasoning is not applied for trademarks which do not have any reference to the active ingredient or INN code. This creates uncertainty for pharma companies, which already face many regulatory and commercial challenges specific to the competitive pharma sector.

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