It is usual among the general consumer to hear about “branded medicines” in opposition to “generic medicines”. Such dichotomy reveals nothing more than confusion between two distinct figures of Industrial Property Law, ie, trademarks and patents.
Thus, in the first situation, when referring to “branded medicines” one will want to make reference to “reference medicines”, which active substance has been patented.
On the other hand, when reference is made to “generics” we refer to medicines composed by an active substance previously protected by a patent that has already fallen into the public domain.
However, the truth is that both the generic and the reference drugs, may have an associated trademark.
The trademarks that designate pharmaceuticals in Class 5 of the Nice International Classification deserve special attention as to some particular aspects that must be taken into account during the assessment of confusion.
Therefore, it should be taken into account that the trademarks intended to cover pharmaceuticals are, in their majority, what we may designate as suggestive signs.
This means that, despite having the necessary distinctiveness to be protected as trademarks, they continue to make reference to the International Nonproprietary Name (INN) associated to them.
In most cases, the trademark results from an agglutination of a suffix or a prefix to a certain part of the INN. Attention is drawn to the two following examples of Portuguese trademarks: the trademark ATACAND, used in the market for pharmaceutical products which INN is Candesartan, and the trademark LANZOGASTRO, used in the market for pharmaceutical products which INN is Lanzoprazole.
This fact leads to a high percentage of litigation cases regarding the registration proceedings of trademarks designating goods in Class 5.
However, the assessment of confusion in these cases should be focused on the prefixes or suffixes, taking into account the overall impression that the distinctive signs under comparison cause on the consumer.
That is to say that the part of the signal that alludes to the INN cannot be taken into account for the assessment of confusion, since the use of such designation shall not be exclusive of a single entity.
In addition to the issues pertaining to the weak or suggestive character of the majority of the distinctive signs registered in Class 5, these specific trademarks raise another question, which relates to the applicability, or not, of the average consumer’s criterion during the assessment of confusion between two or more trademarks.
Thus, there are those who understand that in this particular case of trademarks that indicate pharmaceuticals, the criterion to be applied is the one of the professional consumer or expert (doctor, pharmacist and other health professionals) with expertise knowledge in this area and ability to distinguish two different drugs during their prescription or administration to the patient. It is, in fact, a more permeable criterion to the coexistence of potentially similar trademarks.
On the other hand, some advocate a more prudent principle, which refers to the general criterion of the average consumer, even going a step further, by considering that, due to the nature of the products involved and the risks that any error may bring about to the public health, a stricter criterion should be applied when assessing the eventual confusion between marks.
The Portuguese Courts have applied both criteria, and therefore there is no unanimity on this point. The final decision will always depend on the decider’s analysis in each specific case.
In conclusion, the pharmaceutical trademarks require a special analysis when compared to other trademarks that cover products and/or services in the remaining classes.