Choosing a unique trade mark is important in any field; however, the pharmaceutical industry features some unique trade mark challenges.
Pharmaceutical products can often attract patent protection. This affords the owner a monopoly in that product; however, the monopoly will only last a fixed period, after which it is open season for competitors. Choosing a strong, resilient brand name will help foster brand loyalty and encourage customers to continue purchasing your product even when other (potentially cheaper) products have become available. Obtaining a trade mark registration for your brand name allows you to stop other businesses cashing in on your brand loyalty/success. It also affords protection against inferior products tainting your hard-earned brand recognition.
Pharmaceutical trade marks require regulatory approval. In the UK, the appropriate body is the Medicines and Healthcare Products Regulatory Agency (MHRA). The MHRA will reject a proposed pharmaceutical brand name if they believe that: (i) consumers will confuse the chosen name with the name of an existing medicine; (ii) the chosen name is misleading; or (iii) the chosen name is considered unsafe. Regulatory approval is required before a pharmaceutical product can be sold under the chosen name.
The MHRA’s assessment of the trade mark is entirely separate to the assessment undertaken by the UK Intellectual Property Office (UKIPO) if/when a UK trade mark application is filed. The UKIPO will reject a trade mark application if it considers the mark descriptive or non-distinctive (e.g. “strong medicine” or “cough mixture plus”) – such terms are to be kept free for all to use. If the UKIPO decides that the brand name meets this threshold it will publish it for opposition purposes – this is where an objection can be brought by the owner of an earlier conflicting right. It is strongly advisable to conduct a trade mark search prior to selecting a brand name so that you have an idea of the risk profile of the mark and the likelihood of a third party objection being raised.
A trade mark registration is generally valid for 10 years and can be renewed for successive 10 year period, potentially indefinitely. However, bear in mind that ownership of a trade mark registration does not give you the right to sell a pharmaceutical product under the registered name, regulatory approval is required for that.
Recommendations in light of the above:
Crowdfunding is an increasingly popular method for a company to raise funds to get a new product off the ground. This is particularly prevalent for small businesses and start-ups within the lifestyle and wellness sectors. Successful crowdfunding has been seen in diverse areas such as tabletop gaming, comic books and virtual reality headsets. The potential for a company with its roots in crowdfunding can be extremely high, with the company Oculus starting from searching for a $250,000 investment on Kickstarter to eventually being bought out by Facebook for a figure in the billions.
25.08.2021Hydrovision vs Hylovision - Court offers clear vision in likelihood of confusion case
Keltie Trade Mark attorney Eleni Mezulanik takes a look at this important decision from the General Court.