Aspirin, formerly known as a brand of painkiller manufactured by Bayer, now generally refers to any painkiller (but is still a registered trademark in Germany). It is the most typical example in the pharmaceutical industry of a registered trademark becoming a generic name. When a famous drug brand finally becomes a generic name used for similar goods even though the research and development of the drug have cost a lot and the success of the brand is due to long-term brand positioning and an accumulation of specific target consumers, it is undoubtedly a heavy blow to diligent drug researchers focusing on life saving.
I. Causes of the genericide of drug trademarks
Generic names of drugs are their legal names prepared by the
Chinese Pharmacopoeia Commission in accordance with the General
Principles for Nomenclature of Chinese Approved Drugs and filed
with the Ministry of Health, are the generic names of drugs sharing
the same ingredients or formula, and are mandatory and binding. The
generic name of a drug must be used on labels, instructions or
packaging of the drug to be sold on the market, while drug
trademarks are distinctive signs that are used on drugs to
distinguish the source. From the perspective of a trademark, the
use of a drug's trade name on the drug is just the drug
trademark, and shall have the distinctiveness of registered
trademarks. Whether the trade name of a drug can be registered as a
trademark is subject to the trademark registration procedure,
without the prior permission of the health authorities; whether a
drug trademark has become a generic name is subject to the judicial
review for the identification in order to safeguard the rights and
interests of owners of the unique names of well-known drugs. Why do
trademarks originally used for specific drugs ultimately become
generic names for all similar drugs? As a form of trademark
dilution, the genericide of drug trademarks is mainly due to the
following reasons:
1.The distinctiveness of the trademark is weak, and can be easily
associated with drugs.
2.The name of the new drug is too professional, lengthy,
complicated and unacceptable.
3.The acts of public authorities or external agencies, for
example, the release of a drug trademark as the name of the drug by
the government authorities due to negligence, and the mistaken
inclusion of a trademark as a generic name into dictionaries, false
publicity by the media, etc.
4.An infringer or right owner publicizes and uses a drug trademark
as an alternative for the drug name for a longer time and in a
wider scope.
5.When a drug brand has long been in a dominant position due to
market or administrative reasons, it is also easy to result in the
genericide of the trademark.
II. Danger of turning a drug trademark into a generic name
Case: In 2001, Hangzhou Minsheng Pharmaceutical Group Co., Ltd.
lodged a suit stating that it had managed to register its
self-developed trademark "21金维他" in
1987, and also obtained approval from the trademark office for the
registration of the English trademark
"21SUPER－VITA" in May 1992. In 1988, the Ministry
of Health included "21金维他" in the
Compilation of Standard Varieties of Chinese Drugs as a trade name.
In 1990, Nanchang Sanghai Pharmaceutical Factory began to
manufacture "21 金维他" on a pilot
basis. On 22 May 2000, the China Food and Drug Administration
issued a reply approving the change of the name of "21
金维他" as manufactured by the plaintiff to
"Multivitamin and Minerals Tablets (21)" and use of
"21 金维他" as a trade name, requiring
use of "桑海金维" as the trade
name of the "Multivitamin and Minerals Tablets (21)"
manufactured by the defendant, and making it clear that the reply
took effect on 1 July 2000. At present, however, the defendant
still uses "21金维他" and its English
version "21SUPER－VITA" for production and sales of
the drug. Such use has materially violated the plaintiff's
exclusive right to use the registered trademark. Nanchang Sanghai
Pharmaceutical Factory argued that
"21金维他" is a generic name for drugs,
so its production of "21金维他" that
had been included in the Compilation of Standard Varieties of
Chinese Drugs upon approval complies with legislation and the
provisions of the relevant regulations on drug administration. In
addition, its use of the trademark "Sanghai" had been
registered upon the approval of the Trademark Office. Therefore,
its production and sale of "21金维他"
under the Sanghai brand did not constitute trademark
infringement.
This case is a typical suit triggered by the genericide of a drug
trademark, which resulted in frequent conflict between the drug
name and drug registered trademark. Another reason for the wide
existence of such conflict is the status quo that China's drug
administration is inconsistent with its trademark registration
system. Health authorities believe that any approved formal drug
name is the generic name of the drug. Under the Trademark Law, a
generic name cannot be registered as a trademark. Therefore, any
application for registration of an approved drug name as a
trademark should be declined. While the Trademark Office believes
that the question whether it is the generic name of the product
should be based on the provisions of the Trademark Law, as long as
a trademark subject to a registration application is unique with
significant distinctiveness and is in line with the provisions of
the Trademark Law, it should be registered regardless of whether it
has been approved by the health authorities. As a result, in such a
disordered management system, when a trademark becomes generic, it
on one hand exists in the records of the health authorities as a
generic name, and on the other hand continues to have the exclusive
right with the approval of the Trademark Office. Such situation is
bound to cause series of disputes, resulting in unnecessary costs
and waste of resources.
As stated above, the genericide of a drug trademark can result in
the co-existence of the drug name and the registered trademark. Its
early consequences may be the use of the drug name by manufacturers
of similar drugs. When the trademark owner seeks to safeguard its
trademark right through litigation or other legal means, it is very
likely that the juridical organ will identify the trademark as
having turned into the drug name, and a user of such name without
permission does not constitute infringement, thus encouraging other
manufacturers to use the name and cause the trademark to become
thoroughly generic.
When the name of a drug is also a registered trademark, does any
use of the name on other drugs by anyone else without the consent
of the trademark owner constitute infringement? This is undoubtedly
a very important question for pharmaceutical operators and
researchers. At present, there are two different views in the
academic and judicial communities. One view holds that such use
does not constitute trademark infringement because the existence of
such conflict is a result of the inconsistent systems in China and
there is no subjective fault, and the accusation of someone who
uses a drug name that is also a registered trademark of
constituting infringement would result in a monopoly of the drug by
the manufacturer, and thus hinder economic development and social
progress. The other view believes that the use constitutes
infringement citing the reason that once a trademark is registered
upon approval, the owner should have the exclusive right to use
such trademark; therefore, the use of the same or similar trademark
on the same or similar products will constitute trademark
infringement if it could cause any confusion. It is groundless to
defend for the reason that the trademark has become a generic name,
as the generic name of a drug should be construed according to the
provisions of the Trademark Law, and the rules formulated by the
health authorities that regard a drug name registered by a drug
manufacturer as the generic name of the drug should not conflict
with the Trademark Law.
Therefore, for drug researchers and operators, due to the
discrepancy between juridical theory and practice, drug
manufacturers find themselves unable to predict in advance the
legal consequences of their behaviour, and unable to estimate the
influence on themselves once their trademarks become a generic
name. This would cause more uncertainties for drug researchers and
operators, or even result in unpredictable losses to drug
manufacturers, for example, causing the exclusive right to use a
registered trademark to exist in name, or the scope of protection
for drug trademarks to be limited or to be directly revoked.
III. Protection of drug trademarks from dilution
Drug manufacturers must pay attention to the genericide of drug
trademarks, and should never consider that the turning of a drug
trademark into the name of certain drugs means that the drug is
popular among the relevant public and can gain more popularity. In
contrast, with the lapse of time, the original drug trademark will
gradually enter into the public domain and have no connection with
the manufacturer's trademark. In such case, the manufacturer
will find it very hard to recover the value of the trademark from
the drug name.
At present, there is no clear legislation on trademark dilution
and dilution protection in China. When there is indication of the
genericide of a drug trademark, the trademark owner has no
effective weapon to curb the growth of the genericide. Therefore,
it is important to take measures to prevent genericide from the
beginning of use of a trademark.
1.Improve the significance of a drug trademark itself and conduct
correct publicity. For example, trademarks such as
"Dinggui" have been involved in litigation regarding
disputes over whether they are generic names or exclusively owned
trademarks because they are associated with ingredients of drugs
and have lower distinctiveness, and were finally identified as
generic names of drugs. The "new Contac" is widely known
as a cold drug, but its packaging always contains the trademark
sign®, and in advertising, the "New Contac" trademark
always appears together with the generic name of the drug
"Compound Pseudoephedrine Hydrochloride Sustained Release
Capsules", as well as the name of the manufacturer
"Tianjin Smith Kline & French Laboratories Ltd.",
thus giving the relevant consumers a clear impression that
"New Contac" is a drug trademark, making them always
associate "New Contac" with the manufacturer.
2.Prevent the practice of directly using trademarks as generic
names. "Imada Red Flower Oil" was originally used for red
flower oil by the parent company of Lianhua Pharmaceutical, but has
gradually become the generic name of red flower oil and has been
documented by the relevant administrative authorities over a decade
of use as the relevant public is accustomed to using it as the
generic name for flower red oil drugs of such type. Since the words
"Imada" have no connection with red flower oil drugs,
Lianhua Pharmaceutical could have prevented its genericide if it
had used "Imada" as a trademark prominently in its
promotion efforts.
3.Pay attention to the acts of pharmaceutical health
administrative authorities, and prevent relevant government
agencies from adding the trademark to documents that include the
compilation of drug names. Taking the trademark
"Xingling" as an example, when the Pharmacopoeia
Commission of the Ministry of Public Health compiled the General
Principles for Nomenclature of Chinese Approved drug names for the
book titled Chinese Approved Drug Names, it indicated that the name
"Xingling Granule", "Xingling" is the name of
the drug, while "Granule" represents the form of the
drug. However, the ingredient of the drug is mainly gingko, so
"Xingling" does not fully indicate the composition of the
drug. Therefore, if Shanghai Xingling Pharmaceutical had prevented
the health authorities from documenting the trademark as the name
of the drug as early as possible, it would have been fully possible
to prevent the series of disputes which occurred later.
4.Promptly take necessary legal action to stop any competitor drug
manufacturer from using the trademark as name of their drug, for
example, asking the Trademark Office not to register any infringing
mark and ban its use, requesting the Trademark Office to withdraw
any registered trademark, and meanwhile requesting the court to
issue an injunction. If anyone intentionally dilutes the reputation
of a well-known drug trademark, the drug manufacturer may require
the person to bear the relevant damages.
Due to a lack of awareness of the protection of trademarks and
incorrect use of trademarks, many pharmaceutical companies have
failed to apply for the registration of their product names that
have the characteristics of a trademark, or use registered
trademarks as drug names, eventually leading to the wide use of
these more creative names or trademarks by peers, causing them to
be common resources, and finally be diluted into generic names.
This causes a huge loss in the various intangible and tangible
assets of the companies that are the original owners of these
names. It is advised that pharmaceutical R&D enterprises avoid
trademark genericide for the reason that the drug brand is too big
or the method of promotion is wrong while they are researching new
drugs and fostering drug brands. For this, they should pay
attention to brand building, and positively take various
"dilution protection" measures to increase the degree of
protection of their self-made drug brands, avoid their drug
trademarks being used as generic names so as to better adapt to the
new trends of the pharmaceutical industry at both home and abroad,
and create a good competition environment for the pharmaceutical
market.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
