Some Peculiarities of Registration of Pharmaceutical Trademarks

Аннотация

The number of cases where pharmaceutical trademarks are the subject of proceedings has skyrocketed in recent years. It evidences the relevance of an analysis of the peculiarities of trademark protection in relation to pharmaceutical trademarks, which is presented in the article. Close attention is paid to an analysis of registration of designations identical to INN or derivatives from INN in the Russian Federation. Relying on analysis of the practice of the Chamber for Patent and Trademark Disputes and courts, the authors conclude that designations identical to INN are unable to benefit from trademark protection as non-distinctive and contradictory to public interests. As to designations comprising or resembling INN to some extent, such designations have chances to be registered as trademarks if they are not considered as INN derivatives. A trademark is recognized as an INN derivative if it is similar to INN to the degree of confusion. Ultimately, the authors reach the conclusion that current Russian legislation does not require any amendments to enhance practice on consideration of cases where designations identical or confusingly similar to INN are involved, since such cases can be successfully inserted into general provisions governing trademarks. Another issue which is also examined in the article is the current approach of the Chamber for Patent and Trademark Disputes and courts to the assessment of similarity in relation to pharmaceutical trademarks, especially the practice of applying the so-called «Three Letter Rule». The authors hold the view that prioritization of the «Three Letter Rule» is a negative trend, since following the «Three Letter Rule» blindly cannot replace due assessment of the designation. The authors attempt to prove this by providing examples of flaws inherent in situations including the «Three Letter Rule.”