International Update

The World Health Organization (WHO) gives pharmaceutical substances international non-proprietary names (INNs) so that each substance can be identified by a distinct name. However, pharmaceutical trade marks cannot be composed entirely of INNs.

The rulings of the Court of Cassation (the CoC) indicate that while pharmaceutical trade marks can be derived from INNs, they cannot consist solely of these names.

For instance, an action was filed claiming that the defendant’s trade marks which include the terms CEFITEN and SEFITEN, should be invalidated because they are not unique and directly descriptive for the INN, and the plaintiff invented the CEFDITOREN molecule, which is recognized by the WHO as an INN. The IP Court dismissed the action, ruling that trade marks derived from INNs can be registered even if they lack distinctiveness. The IP Court’s decision was upheld by the CoC in a decision dated 15 December 2015.

The CoC determines that trade marks are not confusingly similar if their only shared elements are drawn from active ingredients because it is seen that the CoC has similar approaches to INNs when the trade marks share an element of active ingredients.

In a case where the Trademark Office found the pharmaceutical trade marks CEFIREX and CEFROX to be similar, the plaintiff sought to cancel the decision, arguing that there was no likelihood of confusion since both trade marks were derived from the active ingredient CEFUROXIME. They contended that these trade marks should be considered low distinctiveness or weak marks. The IP Court and the Regional Court of Appeal determined that there is no likelihood of confusion between the trade marks since they only include the beginning CEF- of the active ingredient while all other elements are different. The cancellation decision was upheld by the CoC in a decision dated 7 September 2023.

In another case decided on 27 March, 2024 the CoC upheld the decision given by the first instance court regarding the case where the application PROGESTERONE STEROP was contested based on the plaintiff’s trade marks PROGESTAN and PROGYNEX. Although the court decided that there would be no likelihood of confusion between these trade marks, as the wording PROGESTERONE is considered an INN that cannot be monopolized by the defendant, it has been decided that in terms of the goods covered by the trade mark PROGESTERONE STEROP, the goods in 5.1 and the goods in class 5.2, which are in close relationship and connection with the goods in class 5.1 should be rejected on the grounds of absolute refusal. Decision N°. 2024/2519 https://karararama.yargitay.gov.tr/index

In summary, the CoC's decisions shed light on the complex relationship between INNs and pharmaceutical trade marks. Although the court recognizes that trade marks may contain components drawn from INNs, it clarifies that to prevent confusion in the marketplace, these trade marks must be different. The cases discussed demonstrate a consistent judicial approach that permits the registration of trade marks derived from INNs, provided they do not solely consist of these names. Furthermore, the court’s hesitance to find likelihood of confusion between trade marks that share only active ingredient elements reflects a nuanced understanding of the unique challenges within the pharmaceutical industry. This body of case law emphasizes the need for pharmaceutical companies to carefully manage the use of established INNs while creating trade marks that are distinctive and memorable in a competitive landscape.

First published by PTMG - Law Lore & Practice December 2024 in Dec 10, 2024.