Pharmaceutical trademark owners consider many factors when
selecting a trademark. As it assists consumers' decision-making
process, a trademark often contains the product's International
Nonproprietary Name (INN) code and refers to the indication or
Regulatory requirements also apply when selecting a trademark.
Despite the sector's special needs and characteristics, it is
disappointing that the similarity examination for pharma trademarks
is still not yet settled in Turkey.
In recent years, the Appeal Court and the Turkish Patent
Institute (TPI) have at times applied a two-stage reasoning process
during similarity examinations on pharma trademarks:
(1) The consumers of the intended trademarks (doctors and
pharmacists) pay a high level of attention; and
(2) Therefore, since pharma preparations are sold only with a
prescription, small changes might be enough to overcome similarity
or the likelihood of confusion.
However, this reasoning has not been universally accepted by the
TPI, or the courts. In many cases, examination of similarity for
pharma trademarks has simply involved applying the TPI's
general guidelines. Recent decisions by the TPI and Appeal Court
show the reasoning above is applied to trademarks which contain the
INN code or make reference to the active ingredient.
Many Appeal Court decisions hold that the earlier trademark
owner which registers a trademark very similar to the active
ingredient or INN code should tolerate the use of similar
trademarks derived from the same active ingredient or INN code.
For example the Appeal Court allowed the trademark
'Amreks' by finding it not similar to the earlier trademark
'Ambridex', despite both trademarks being derived from the
same active ingredient, ambroxol. The Appeal Court allowed the
later trademark on the basis that both trademarks are intended to
be used on prescription drugs. Accordingly, it reasoned they both
appeal to a consumer group with a high level of attention.
Uncertainty for pharma
However, the reasoning is not applied for trademarks which do
not have any reference to the active ingredient or INN code. This
creates uncertainty for pharma companies, which already face many
regulatory and commercial challenges specific to the competitive
For instance, the Appeal Court found the trademarks
'Nimo' and 'Rimo' confusingly similar, despite the
fact that they are both prescription drugs, and the court
determined the relevant consumer to be "a consumer group with
a high level of attention: namely, doctors and
On the other hand, the TPI rejects applications which are
identical or almost identical to an already registered INN code.
Within this scope it rejected an application to register
'Meloglaptin' (in class 5) during its examination on
absolute grounds. The rejection was based on a high level of
similarity existing with the (already registered) INN code
Pharma companies should also take into account the
'three-letter rule', which the Pharmaceuticals and Medical
Devices Agency of the Ministry of Health applies when issuing sale
licences for drugs. When issuing a sale licence, the agency
requires the drug name to be different from those of earlier
licensed drugs. In some cases, the agency accepts a difference in
three letters. Accordingly, this sets a higher bar for the
similarity examination of pharma trademarks.
Three criteria should be taken into account when selecting a
trademark for a pharma product:
The trademark should be
differentiated from the INN code or the active ingredient in order
to prevent an office action based on a descriptiveness
The trademark should be
differentiated enough from equivalent products in the market to
avoid a likelihood of confusion before the relevant public;
The selected product name should
comply with the agency's three-letter rule, which is applied
during the last stage of the sale licence application.
The TPI's and the Appeal Court's practices are based on
the idea that the closer a trademark is to the active ingredient or
the INN code, the weaker the trademark is. In practice, it is
accepted that similar trademarks can exist alongside each other,
even if they are derived from the same active ingredient or the INN
code. However, the TPI and Appeal Court do not seem to take
precedent cases into account during similarity examination of
trademarks which have little or no reference to the active
ingredient or INN code.
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