Pharmaceutical firms must take their generic medicine on trademark use

By Eric Su and Daisy Yao, HFG
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The principle signs that can be used on pharmaceuticals are the generic name of the pharmaceutical, the trade name of the pharmaceutical and a trademark. The generic names of pharmaceuticals – for example, paracetamol, the generic name of a cold relief medicine – can be found in the Pharmacopoeia of the People’s Republic of China, state pharmaceutical standards, pharmaceutical standards issued by the Ministry of Health and pharmaceutical standards issued by the provinces, autonomous regions and centrally governed municipalities. As the generic name of a pharmaceutical does not satisfy the provision of article 11 of the Trademark Law on distinctiveness and ease of identification, it cannot be registered and no one may secure the exclusive right to use the same.

Eric Su Partner HFG Shanghai
Eric Su
Partner
HFG
Shanghai

The term “trade name of a pharmaceutical” is the name created by a pharmaceutical enterprise to distinguish different sources of a pharmaceutical or to distinguish different pharmaceuticals of the same enterprise, e.g. the trade name Tylenol is the name used by Johnson & Johnson for its paracetamol tablets. The 2006 Notice of the State Food and Drug Administration on Further Standardising the Administration of Pharmaceutical Names specifies that only Chinese characters may be used in the trade names of pharmaceuticals and that such names must comply with the Principles for the Creation of Trade Names of Pharmaceuticals.

As for trademarks, although the Law on the Administration of Pharmaceuticals, amended in 2001, abolished mandatory registration of pharmaceutical trademarks, by 2006 the Regulations for the Administration of the Instructions for the Use of, and the Labels of, Pharmaceuticals expressly provide that “the use in the instructions for the use of, and labels on, pharmaceuticals of unregistered trademarks or other pharmaceutical names not approved by the State Food and Drug Administration is prohibited”. In other words, a pharmaceutical company can only use a trademark when its registration has been approved on a pharmaceutical.

Pharmaceuticals concern the health of the public, so there are many special provisions. In order to safeguard the lawful rights and interests of the public and ensure pharmaceutical safety, the examinations for registering pharmaceutical trademarks must be conducted prudently, and this explains the relatively high rate of rejection of pharmaceutical trademark applications. Analysing cases in recent years, we have found that the following are the main reasons for rejecting pharmaceutical trademarks.

Function and purpose

Pharmaceutical enterprises naturally wish that once a pharmaceutical has been put on the market, the public can easily distinguish such features as its function, purpose and effect. However, according to article 11 of the Trademark Law, those signs “which consist exclusively of a direct designation of the quality, main raw materials, functions, intended purpose, weight, quantity or other characteristics of the goods” may not be registered as trademarks.

Daisy Yao Partner HFG Shanghai
Daisy Yao
Partner
HFG
Shanghai

In the “便秘舒 & Device” trademark rejection re-examination dispute case, the court held that the use of that trademark on: “medicines for humans; capsules for pharmaceutical purposes; pharmaceutical preparations; medicines for alleviating constipation; medicinal herbs; tablets; prepared traditional Chinese medicines; dietetic substances adapted for medical use; medicines for veterinary; preparations for destroying vermin”, etc., directly describes such features of the product as their function, purpose, making it difficult for the public to distinguish the source of the product. Even if a declaration were to be made waiving the exclusive right to use the characters “便秘” in the course of actual use, the public would read them into the entirety of the trademark.

Targeted condition or treated area

When examining a pharmaceutical trademark, the examiners will generally consider whether the trademark contains the name of a human organ or treated area (e.g. “速康骨痛宝” – literally “treasure that quickly soothes ostealgia”), the targeted condition or virus name (e.g. “感日克” – “overcoming a cold in a day”; or “淋克星” – “the bane of gonorrhea”), the target of use (e.g. “妇平” – “soothing [for] women”) or the shape or dosage form of the pharmaceutical itself (e.g. “injection”) or any other such element that is likely to cause mistaken identification by consumers.

In the Vaxem-Hib trademark case, the Beijing higher court pointed out that Hib, as the main pathogen that causes lower respiratory tract infections among infants, has a special meaning and even if an application is made for its registration solely on “vaccines for human purposes”, it may nevertheless cause a mistaken identification by the public of the function, purpose, etc., of the goods on which the trademark is used. With respect to goods such as vaccines for human purposes, which concern the life and health of the public, mistaken identification should be avoided as much as possible.

Generic name as a trademark

The direct use, translation or transliteration of a pharmaceutical’s generic name, alternate name, conventional name or former name is another reason for the rejection of a trademark application. With respect to trademarks used on such goods as “medicines for human purposes”, a construction with a pharmaceutical’s generic name may not be registered, and that includes trademarks that contain the generic name in Chinese (e.g. the antidepressant “布替林”), or a foreign language (e.g. Butriptyline), or a name that is similar to such a generic name (e.g. “柔红霉素”, which can de deemed similar to the generic name “红霉素”, or erythromycin). In the Pfizer Envacar trademark case, the trademark was designated for use on such goods as pharmaceutical preparations in Class 5. The Trademark Review and Adjudication Board held that, based on the definition of Envacar in the Modern English-Chinese Glossary of Drugs as “guanoxan sulphate (an antihypertensive agent)”, it can be seen that Envacar is the generic name of an antihypertensive agent, which cannot be registered as a trademark.

If there is a generic term describing a place of sale for pharmaceuticals (for example, the characters “tang” (hall), or “guan” (shop), the form of a pharmaceutical itself (such as pills, ground powder, ointment, pellet, liquid or powder) or its effect (such as recovery, soothing or overcoming) in the sector, examiners will generally not consider such a term as being of any concern.

Eric Su and Daisy Yao are both partners at HFG in Shanghai

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