Protecting pharmaceutical trademarks in Saudi Arabia
According to reports, the Arab pharmaceutical business is worth over $20 billion and is expected to increase at a compound annual growth rate of about 9% between 2012 and 2016. In the region, there are about 450 pharmaceutical companies. All Middle Eastern countries, with the exception of Egypt, are large importers of branded medications, while domestic production capabilities are primarily limited to generic and licenced drugs with little R&D. As a result, it is becoming increasingly vital for trademark holders to face the issues of pharmaceutical trademark protection in the Arab world and to get more familiar with the regional standards.
Registrability of pharmaceutical trademarks
A trademark can be anything that takes on a distinctive shape, such as names, words, signatures, letters, symbols, numbers, titles, stamps, drawings, pictures, inscriptions, packaging, figurative elements, shapes or colours, groups of colours, or combinations thereof; or any sign or group of signs used or intended to be used to distinguish the goods or services of one undertaking from those of others, or intended to identify a service, or used as a trademark. Trademarks cannot be registered in Saudi Arabia for goods or services that are prohibited. Pork products and alcoholic beverages, for example, are prohibited in this country.
How can a pharmaceutical trademark be registered?
Conducting a clearance search
A thorough pharmaceutical trademark availability search should seek to encompass a variety of sources, including the records of local regulatory bodies, in addition to a standard trademark search. However, there are two limits that rights holders should be aware of. To begin with, no pan-Arab marketing authorization exists. Second, not all records are open to the public.
In general, trademark offices across the region have improved their ability to assess the possibility of consumer misunderstanding when it comes to pharmaceutical trademarks. In some nations, such as the United Arab Emirates, Bahrain, and Jordan, consumer sophistication in relation to prescription pharmaceuticals is taken into account. With the exception of Morocco and Lebanon, trademark offices in all Arab countries conduct related grounds examinations. There appear to be no particular rules preventing the acquisition of proprietary rights on international non-proprietary names (INNs), such as prohibiting registration of the name as a trade name or trademark. Although the World Health Organization (WHO) has asked that member countries take the required procedures to prevent the acquisition of property rights on INNs, such as forbidding the name from being registered as a trade name or trademark, practice differs greatly across the area. The registrant will not investigate whether the trademark is an INN in countries where there is no substantive examination, such as Lebanon and Morocco. In other countries with substantive examination, examiners are not required to check if the mark is an INN, but it may be feasible to oppose a trademark based on its similarity to an INN or an INN stem.
Packaging of pharmaceutical products
Almost all Arab countries have legislative standards for pharmaceutical packaging (for example, the display of chemicals, side effects, language, and safety warnings). In terms of language, legal requirements in some countries, such as Morocco, Tunisia, Egypt, the United Arab Emirates, Syria, Saudi Arabia, and Qatar, demand the use of the mark in Arabic on the packaging and/or the leaflet. As a result, in countries where Arabic is required, protection of the mark in the Arabic script is required, even though registration of a trademark in English should, in general, protect against the registration of another mark with a prominently featured or at least confusingly similar Arabic transliteration that could cause public confusion.
Except for Syria, none of the Arab countries has filing requirements that are special to Class 5. In support of the trademark application, the Syrian Trademark Office requests thorough information on the product's provenance. With the exception of Algeria, Morocco, Gaza, and Lebanon, all territories require the legalization of supporting documents. In other nations, use is not required for registration. With the exception of Algeria, this is also true for renewals. Failure to utilise the trademark within a set time frame, on the other hand, makes a registration open to cancellation on the basis of non-use by any interested party.
Enforcement of Trademark law
According to the WHO, counterfeit pharmaceuticals have increased by 20 percent to 30 percent of the market in emerging countries. In some locations, distribution channels are less tightly monitored, making it more difficult to prevent counterfeiters from infiltrating supply chains. Counterfeiting in general, and notably counterfeiting of medications, is not a criminal offence in many Arab countries. When it is, the sanctions are usually not exclusive to counterfeit pharmaceuticals, but rather to all types of counterfeiting, particularly infringement of intellectual property rights. Fines, jail, and confiscation and destruction of counterfeit items are all possible penalties that differ by country. On the enforcement front, a variety of measures can be adopted throughout Arab countries, utilizing a variety of methods ranging from site investigations and raids to civil and criminal legal procedures, as well as customs seizures. The customs recordal method, which has been adopted in Algeria, Morocco, Sudan, Tunisia, and the United Arab Emirates, is another important tool for maintaining an efficient enforcement strategy. Qatar and Abu Dhabi (a UAE emirate) are also likely to use Recordal, however, the exact date of implementation is unknown. A major concept of the recordation system is that it allows customs authorities to use an ex officio border system (in addition to providing a central register with information for recorded trademarks). This is in contrast to the traditional border system, in which a judicial authority orders Customs to detain the illegal shipment once the infringing products have been identified. The main benefit of the ex officio method is that it allows customs agents to act quickly and pro-actively, eliminating the delays that come with pursuing court action. Customs officers are constantly on the watch for infringing goods, allowing them to seize counterfeit and pirated goods rapidly.
In a nutshell
In order to arrive at a well-established trademark protection plan, rights holders must be ready and willing to embrace a model that integrates both legal and regulatory approaches. Naturally, copyright holders should get professional guidance before deciding on the best course of action.
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.