Pharmaceutical Trademarks: A Global Guide 2018/2019

A comparative overview of the main areas of trademark and related law as they affect pharmaceuticals in key countries.

Industry insight

Managing a pharmaceutical trademark portfolio with the assistance of outside counsel

BEST Rechtsanwälte PartmbB
Responsibility for a company’s portfolio is frequently placed in the hands of a few specialists. Often, this is not the only task carried out within the department. However, the legal protection of trademarks requires a high degree of specialisation.

Country chapters

Procedures and strategies for pharmaceutical brands: Brazil

DANIEL Legal & IP Strategy
Brazil is a first-to-file jurisdiction, and therefore IP rights are acquired only when an application is filed and registered with the Brazilian Patent and Trademark Office. However, pharmaceutical trademarks fall under two separate and independent statutory regimes.

Procedures and strategies for pharmaceutical brands: Canada

Bereskin & Parr LLP
Sweeping amendments to the Trademarks Act are expected to be implemented in 2019. The amendments will fundamentally affect the way in which all trademark owners will need to approach their selection, clearance and registration strategies, and the pharmaceutical industry is no exception.

Procedures and strategies for pharmaceutical brands: Chile

Silva
Two frameworks are applicable to pharmaceutical marks in Chile. The Industrial Property Law and its regulation set out the rules for the registration and use of trademarks; the Sanitary Code and Decree 3/2010 regulate the pharmaceutical product marketing authorisation procedure.

Procedures and strategies for pharmaceutical brands: France

DLA Piper
In order for a pharmaceutical trademark to be registered, no prior authorisation is needed per se. Unlike in other countries, in France the trademark owner is independent from the party exploiting the trademark and need not possess a particular quality.

Procedures and strategies for pharmaceutical brands: India

LexOrbis
Indian trademark law prohibits registration of marks which are descriptive in nature or devoid of distinctiveness, except where the mark has acquired distinctiveness or secondary significance on account of its use, publicity and popularity.

Procedures and strategies for pharmaceutical brands: Mexico

OLIVARES
There is no clear link between the IP Law and the Health Law and their regulations regarding conflicts between registered trademarks and marketing authorisations or distinctive names. IMPI examiners usually consider the three-letter rule when analysing the similarity of pharmaceutical trademarks.

Procedures and strategies for pharmaceutical brands: Romania

Cabinet M Oproiu
In Romania, pharmaceutical trademarks are governed by the same national legislation and relevant EU directives and regulations as other trademarks. However, when selecting trademarks to register, and in contentious matters, some specific elements must be taken into account.

Procedures and strategies for pharmaceutical brands: Serbia

Popović Popović & Partners
The requirements for registration of pharmaceutical trademarks are the same as for any trademark: a request for registration in the prescribed form, including a representation of the sign and a list of goods covered, along with the payment of a fee.

Procedures and strategies for pharmaceutical brands: Switzerland

Zulauf Partners
Swiss law includes no specific provisions on international non-proprietary names (INNs). INNs are considered to be generic terms if they stand alone and thus cannot be registered as trademarks.

Procedures and strategies for pharmaceutical brands: United Kingdom

CMS Cameron McKenna Nabarro Olswang LLP
To minimise the risk of counterfeit medicines reaching consumers, the Medicines and Healthcare Products Regulatory Agency licenses all steps of the medicine distribution system and monitors the supply and manufacture of medical devices.

Procedures and strategies for pharmaceutical brands: United States

Baker McKenzie
Clearing and registering pharmaceutical trademarks in the United States are often more complex and challenging than in other countries. This is due in large part to the requirement that the Food and Drug Administration approve all pharmaceutical trade and generic names.