Practice regarding registration of trademarks containing INNs is clarified


The Ukrainian Institute of Industrial Property has upheld a decision of the Appellate Board in which the latter had held that the trademark THALIDOMIDE CELGENE should be registered for a limited list of goods, with a disclaimer for 'thalidomide'.

Celgene Corporation, a multinational biopharmaceutical company based in the United States, applied to extend protection to Ukraine of the international registration for the word mark THALIDOMIDE CELGENE for "pharmaceutical preparations used to treat cancers and immune-related diseases" in Class 5 of the Nice Classification (International Registration 982991, October 23 2008).

On October 29 2009 the Ukrainian Intellectual Property Office (IPO) issued a provisional refusal, claiming that the trademark consisted exclusively of signs that are commonly used to designate the kind of the goods. The IPO based its decision on Article 6(2) of the Law on the Protection of Rights to Marks for Goods and Services (December 15 1993, as amended), which provides that legal protection shall not be granted to marks which consist exclusively of signs that are commonly used to designate the kind of the goods and services.

On July 26 2010 Celgene, through its representative, filed a response to the provisional refusal. In support of its application, Celgene pointed out that it owns an international registration for the mark CELGENE (covering goods in Class 5) which is valid and widely used in the countries of the European Economic Area, the United States, Ukraine, Russia and other jurisdictions. Celgene explained that it was interested in protecting the mark THALIDOMIDE CELGENE in order to distinguish its products from those of other manufacturers of thalidomide and to protect itself from counterfeits. It emphasised that it had no intention of obtaining an exclusive right to use 'thalidomide' as a trademark.

In order to overcome the refusal, Celgene also decided to limit the list of goods to “pharmaceutical preparations containing thalidomide used to treat cancers and immune-related diseases”, thus confirming its intent to cover only pharmaceutical preparations containing thalidomide. In addition, Celgene submitted evidence of the registration of THALIDOMIDE CELGENE, with a disclaimer for 'thalidomide', in other jurisdictions (eg, Australia, Benelux, Hungary, Ireland, Norway, Switzerland, Turkey, the United Kingdom and the United States).

Furthermore, Celgene pointed out the provisions of the Guidelines on the Use of International Non-Proprietary Names (INNs) for Pharmaceutical Substances, according to which “registration of an INN together with a firm’s name is perfectly acceptable, as long as it does not prevent another manufacturer from using the same approach”. Taking into account that the 'Celgene' element of the mark was part of the firm’s name, it emphasised that there was no reason why THALIDOMIDE CELGENE could not be registered with a disclaimer for 'thalidomide'.

The examiner rejected these arguments and upheld the provisional refusal. On October 6 2010 Celgene filed an appeal to the IPO’s Appellate Board, asking that the refusal be reversed based on the same arguments.

The Appellate Board accepted Celgene's arguments and ruled that the mark THALIDOMIDE CELGENE should be registered for a limited list of goods, with a disclaimer for 'thalidomide'. The board’s decision was confirmed by the Ukrainian Institute of Industrial Property (144-H, December 30 2010) and, on January 25 2011, the institute sent a notification of the final decision to the World Intellectual Property Organisation.

This decision is significant in that it clarifies the practice of the Institute of Industrial Property with regard to the registration of trademarks containing INNs.

Dina Kryvoshei, PETOŠEVIĆ, Kiev 

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