Small Pharma Companies: How to know if a drug name is available or not?
Pharma industry contributes more than any other sectors to the trademark industry by filing number of applications for trademark registration. This is apparently backed up by the recent Annual Report 2012-2013 published by The Controller General of Patents, Designs and Trade Marks (CGPDTM).
Trademarked vs Non-trademarked names
Trademark is not necessarily a subject matter of first-to-file basis unlike patent applications. Trademark can be aptly defined as a “mark” used in trade to distinguish one’s goods from others. It makes more sense as to who adopts the marks early and how well the adopted mark is exploited in trade. This is typically the case in most of the oppositions. Business owners ignorant of the trademark laws and benefits do not come forward to obtain registration and continue to exploit their brand, but wake up only when someone imitates or misrepresents or tries to register their brand. These nonregistered brands pose a great risk for other pharma companies when they try to apply for trademark without knowing the existence of the brand. Unless handled diplomatically this would obviously turn into a long battle.
How to identify non-trademarked names in the marketplace?
It is indeed a challenge to identify unregistered brand names out in the market when zeroing in on the names. The following are some of the commonly used resources to look for unregistered names:
- Drug indexes
- International Non Proprietary Names (INN)
- Central Drugs Standard Control Organisation
- Internal databases maintained by pharmacies
- Field market research
Although there is no definite rule or strategy to look for unregistered brands, combination of all of the above has certainly proved effective as evidenced by most pharma companies who do not have a large fleet of human resources to carry our investigations.
What are the benefits of checking unregistered names?
Doing a diligent search in the market to look for unregistered names not only save you time, efforts and costs invested in marketing and branding, but also a long litigation and unwarranted dispute. In case of a dispute despite a diligent search, the attempts made to look for unregistered names could very well be in your favor in the court of law. This helps you to get into the groove of honest concurrent user or disprove the “bad faith” registrant tag.
- Saves time, costs and money invested in marketing and branding
- Saves unwanted opposition proceedings
- Prevent long legal litigation
- Saves from cancellation of registered mark
- Easily disprove dishonest intention
- Efficient brand management
Why to avoid descriptive or identical drug names?
It is quite normal to think that descriptive names are easy for consumers to identify the products, but trademark law states otherwise. In India, it is a common strategy to get a descriptive name approved by including colours, designs and other graphical elements in addition to the name. However, before approval in most cases, the registrant will be required to disclaim the exclusive rights, which may affect the mark to a lesser or great extent.
What is the use of registration? An example is a registration for the mark “ANTI-CLOT” bearing No. 1037961 which was approved upon the condition “Registration of this Trade Mark shall give no right to the exclusive use of the WORD “ANTI” AND WORD “CLOT” SEPARATELY”. In a strict sense, this should not have been approved in the first place as it is descriptive and does not qualify to be a trademark sans source indicator.
Regardless, the author leaves it to the imagination of readers to ponder what real purpose would registering such mark serve the registrant.
Can you fully rely on trademark attorney?
With millions of brand names, registered and unregistered, already in the market, it would rather be prudent to not rely only upon the trademark clearance search conducted by attorneys. A trademark counsel, even if he knows well how the pharma industry works, cannot provide you any assistance more than performing a trademark clearance search and advising you of any objections or oppositions. It is impractical for an attorney to look for any trouble beyond that. The onus is upon the applicant to conduct a thorough market search before shortlisting and sending the names to the trademark attorneys.
Effective role of the applicant is imperative
In short, our trademark registry is currently moving towards to the 30-million mark of newly applied, pending, abandoned and registered marks. Therefore, in order to attain the real benefits of trademark registration, applicants have a significant role to play to conduct a thorough investigation in the market even before they approach the trademark attorneys for registration.