Clearing a pharmaceutical name for use in Europe – creating a headache to solve one!
Our instructions were to clear a pharmaceutical name for use throughout the European Community. "An easy enough task", you might think. "It can't be that difficult to clear a name in the fifteen member states" - or can it??
Our initial trade mark searches were quickly completed, but, unfortunately, they made it clear that the name was not available.
Undeterred by this, the client proposed a second name. EU wide trade mark searches took place once more. Again, we analysed the results. This time they looked more favourable, so we proceeded to carry out a broader "in use search" to discover any unregistered names that might create problems. ("In use searches" are quite far reaching and include reviews of company names and trading names, searches of relevant trade directories for unregistered brand names, domain name searches and a widespread internet search).
Bad news again! The "in use search" disclosed earlier use of similar names. We then carried out further research to determine whether any of those names were still in use and, if so, in relation to what products. When this further research was completed, it was clear that the name could not safely be used. Although this was not what the client wanted to hear, it agreed it was better to hear it sooner rather than later!
Some of the earlier rights that we encountered did not, in fact, relate to pharmaceutical products; however, they covered goods such as weed killers and pesticides etc which made them totally unacceptable from a public safety (as well as a public relations!) point of view. Effective searching involves not only knowledge of the law, but also knowledge of the industry, the ability to assess customer attitudes and reactions, and some good common sense.
Here, we had to consider also guidelines issued by The European Agency for the Evaluation of Medicinal Products (EMEA). EMEA has responsibility for the scientific evaluation of medicinal products for human and veterinary use. A sub-committee of EMEA, the Committee for Proprietary Medicinal Products (CPMP) is responsible for the pre-authorisation evaluation of medicines for human use. It decides whether new pharmaceutical products may be marketed in the EU. To assist it in its decision making process, CPMP has drawn up guidelines for the naming of human medicinal products, identifying certain inherent difficulties.
Having concluded that the second name had problems under both the law and the EMEA guidelines. a third name was proposed! Again, searches were conducted and the results interpreted. And again, further investigations were required in respect of pre-existing unregistered rights. Eventually, following these investigations, the name was cleared and an application for the cleared name was immediately lodged with the Community Trade Mark Office.
However, that is not the end of the matter! The proposed name must also be filed with the EMEA and it too must give its approval before the product can be marketed under the name.
To be continued...
