Thursday, September 15, 2005

Chemical Names as Pharmaceutical Trade Marks

Here's an odd one on trademarks.

The article was published in pharmabiz on Thursday, December 30, 2004.

Normally, any symbol or word capable of graphical representation and distinct enough to distinguish the goods and services of one person from those of others may be registered as a trade mark. Upon registration, the owner acquires an exclusive right, in perpetuity, to use the trademark.It is common practice to name drugs either by the name of the organ it treats (Liver: LIV-52), or by the principal ingredients (Cipro-floxacin: CIPRO), or the name of the ailment (Common cold: COLDARIN), which enables the doctor to associate a particular trade name with the organ, ingredient or ailment thereby reducing the chance of error.

Predominan-tly, trade names are derived from the chemical name or the generic name. The chemical names and generic names cannot per se be registered as trade mark as they are hit by section 13 of the Trade Marks Act, 1999. The section states that no word which is the commonly used and accepted name of any single chemical element or single chemical compound in respect of a chemical substance shall be registered as a trade mark.

Moreover, chemical names would be rendered unregistrable as a trade mark under clause (a) of section 9 which states that trade marks devoid of any distinctive character, capable of distinguishing goods of one person from those of another, shall not be registered. As chemical names designate the kind of goods, the goods will be rendered unregistrable even under clause (b) of section 9 which provides that trade marks which consist exclusively of marks which may serve in trade to designate the kind of goods shall not be registered.Under section 23(1) of the old Act (Trade and Merchandise Marks Act, 1958) the Central Government is empowered to give directions as to the list of marks that are not registrable. Accordingly, it has issued a direction that no trade mark shall be registered in respect of the following drugs:
1. Analgin
2. Aspirin
3. Chloropromazine
4. Ferrous Sulphate
5. Piperazine and its salt such as adipate, citrate and phosphate
6. New single ingredient drug first introduced in India

While making a trade mark application for pharmaceuticals pertaining to the above list, the Registrar of Trade Marks requires the filing of an affidavit stating that the trade mark applied for is not used or intended to be used in respect of the listed drugs. However, the new Act (Trade Marks Act, 1999) does not contain a similar provision.The pharmaceutical industry has devised ways to get over these provisions which restrict the use of chemical names. Ingeniously, drug manufacturers resort to coining words which contain a part of the chemical name, so that the product may be identified with a particular chemical substance. For instance, the drug containing the Active Pharmaceutical Ingredient (API) Ciprofloxacin is manufactured by different companies under the trade names ALCIPRO, CIPRO, CIPROBID, CIPROLET, CIPROVA. The word CIPRO figures in the trade names of all the above products. This serves the purpose of identifying the drug. But the same has also given rise to trade mark infringement cases filed by drug companies on the ground that product of its competitor which employs a part of the chemical name in its trade name, is deceptively similar to its own trade name.

In USV Ltd. v. Systopic Laboratories Ltd., 2004 (1) CTC 418, the Madras High Court had to decide whether the two pharmaceutical trade names "PIO" and "PIOZ" containing the API, Pioglitazone were deceptively similar. The Division Bench of the Madras High Court upheld the decision of the Single Judge in USV Ltd. v. Systopic Laboratories Ltd., 2003 (27) PTC 203 (Mad). In holding that the two names were not deceptively similar, the Court stated that the word "PIO" has become publici juris and that there could be no monopoly over it. The rules regarding deceptive similarity take a special connotation with regard to pharmaceutical trade names. As the drugs are prescribed by registered medical practitioners and dispensed by qualified pharmacists, the chances of confusion arising out of two products being deceptively similar are considerably reduced. To this extent, some similarity is allowed.

The concept of publici juris deals with public rights. The term signifies a thing or a right that is open and exercisable by all persons. It designates things that belong to the entire community, and not to any private party. The Madras High Court held that the term PIO being a part of the chemical name, PIOGLITAZONE, belongs to the public domain and as such no one can have a right over it.Usually, common suffixes or prefixes do not come in the way of distinctiveness. The nature of certain trades may require common suffix/ prefix for the purpose of familiarity. The distinctive nature of the word would then depend on the remaining part of the word attached to these common suffixes and prefixes. A term would be considered as a prefix or suffix only if they are derived from common or generic words.

But if the name is derived or coined form the name signifying the principal ingredient used in the medicine, no distinctiveness or exclusiveness can be claimed by the manufacturer in respect of that part of the name. It is now well-settled that no person can claim exclusive use of the descriptive and generic terms and it would be highly undesirable to confer on one trader proprietary right over the use of an ordinary, descriptive or generic word indicative of the nature, composition and quality of the goods as that would give him complete monopoly to exhibit the word to the exclusion of others(Panacea Biotec v. Recon, 1996).Pharmaceutical companies should cautiously exercise the choice of naming their products with trade names derived from the chemical or generic name. Though it grants familiarity to the new drug, it also dilutes the proprietary right over the trade name. There can be no monopoly over a chemical name which is descriptive of a particular ingredient.