Contributed by attorney-at-law Lina Meskauskiene


Facts

An opposition has been submitted with the Appeals Division of the State Patent Bureau of Lithuania against international registration No. 773522 in Lithuania of the trademark LODIGREL owned by Egis Gyogyszergyar RT, which is registered for pharmaceutical preparations for human purposes. The said registration was challenged based on unconformity with absolute requirements applicable to trademarks, namely on the fact that the trademark LODIGREL had no distinctive features, that it had become generic, indicated characteristics of goods, also on the fact that it could mislead the society.

The interested party reasoned that the trademark LODIGREL was similar to the name of the pharmaceutical substance CLOPIDOGREL, which is included into the list of international non-proprietary names (INN) for pharmaceutical substances published by the World Health Organization (WHO). Also, as the trademark includes an INN stem ‘GREL' which means ‘platelet aggregation inhibitors', the use of ‘GREL' in the trademark LODIGREL provides the consumer of this pharmaceutical with information about certain specific characteristics of the pharmaceutical, and the use of ‘GREL' in the trademark may mislead the public.


Decisions

On 3 March 2003 the State Patent Bureau of the Republic of Lithuania took a decision to reject the opposition of the person concerned, reasoning that the opposed trademark LODIGREL conformed to all absolute requirements applicable to trademarks. The Appeals Division stated that the challenged trademark LODIGREL could not be identified with the sign CLOPIDOGREL, also that it was an artificial word with no meaning, therefore it did not denote any characteristics of goods and could not mislead the public.

The interested party appealed against this decision of the State Patent Bureau of the Republic of Lithuania with a court of first instance, which satisfied the claim and recognised the registration of the trademark LODIGREL invalid. The court established that the pharmaceutical substance under the name CLOPIDOGREL was a result of the activities of the interested party, the name of this pharmaceutical substance was included into the list of international non-proprietary names (INN) for pharmaceutical substances published by the WHO. The court, having taken into account the explanations in the "Guidelines on the Use of International Non-proprietary Names for Pharmaceutical Substances" published by the WHO, World Health Assembly resolution WHA46.19 "Non-proprietary names for pharmaceutical substances", this list of common stems used in the selection of INN, as approved by the WHO, decided that the use of the common stem ‘GREL' (‘-grel') in the name of the pharmaceutical provided any consumer of this pharmaceutical or any other person related to pharmaceutics with information that that pharmaceutical must have an anti-thrombosis effect or must be at least oriented towards it. For this reason, a common stem that actually has no meaning gains a notional meaning in the field of health care. The court indicated that there were grounds for a conclusion that the whole sign which included such a common stem was intended for marking of pharmaceutical preparations, indicated the main characteristics of the preparation, i.e. it provided information about specific pharmacological substances and the purpose of the pharmaceutical. Meanwhile, the pharmaceutical preparations marked with the trademark including the said common stem have a different effect (the challenged trademark LODIGREL is registered for marking of goods of class 5 "pharmaceutical preparations for human purposes") and may mislead the public.

Egis Gyogyszergyar RT appealed against the decision of the court of first instance with an appellate court, but the latter did not override the decision of the court of first instance. After Egis Gyogyszergyar RT and the State Patent Bureau of the Republic of Lithuania appealed against the decision of the appellate court with the Lithuanian Supreme Court, a new decision was taken whereby the claim of the person concerned was rejected and protection was granted for registration of the trademark LODIGREL in Lithuania.

The Lithuanian Supreme Court has indicated that the trademark LODIGREL consists of three syllables and the element ‘GREL' is only one of the elements of the word forming the mark. And only a small part of average consumers of these goods will conceive the element ‘GREL' of the trademark LODIGREL as a common stem used in the selection of INN, meaning a platelet aggregation inhibitor. The first two syllables ‘LODI' make this trademark undoubtedly distinctive. It also noted that an average consumer – reasonably well-informed, careful and cautious – usually perceives a mark in its entirety and does not analyse its separate details. The Lithuanian Supreme Court also stated that the trademark LODIGREL did not coincide with the international non-proprietary name (INN) for the pharmaceutical substance CLOPIDOGREL and did not repeat it.


Comments


If the protection for registration of the trademark LODIGREL were not granted, the practice formed by the State Patent Bureau of the Republic of Lithuania would change and would neither conform to the practice of trademark registration previously formed in Lithuania, nor the international practice of trademark registration. Both the court of the first instance and the appellate court had narrowed the content of the requirements applicable to trademarks. The courts referring only to the ending ‘-GREL' of the trademark LODIGREL (though it has not even been proved that consumers see such an ending as a separate element), attributed the characteristics incidental only to the ending ‘-GREL' to the whole trademark and came to a conclusion that this trademark was purely descriptive. We would like to draw your attention that the Register of Trademarks of the Republic of Lithuania often registers trademarks for marking of pharmaceutical preparations one of the elements of which is a common stem used in the selection of INN. Such elements are recognised to be the weak elements (formants) of trademarks and do not have strong distinctive power, for example, AMPISULCILLIN, FLAVOMYCIN, etc. Such a practice of trademark registration formed in our country by the State Patent Bureau also conforms to the EU trademark registration practice. For instance, the EU has registered such trademarks as ALBULEUKIN, CYTOLEUKIN, EBEPLATIN, LIDOMODIL, MUNDIL, etc. In the case in question the trademark element ‘-GREL' can be considered only a weak element (formant), but in no way can it be identified with whole trademark LODIGREL and, therefore, characteristics which are attributable to the weak element ‘GREL' cannot be attributed to the whole trademark.

Also, if the use of INN stems in trademarks were prohibited, it would be a violation of the principle of equal opportunities. Please note that pharmaceutics is not the only field in which it is customary to make trademarks of composite parts indicating characteristics of goods. Trademarks made of parts indicating characteristics of goods are registered for other goods, as well, e.g. PAULIG COFFEE.

The said decision of the Lithuanian Supreme Court has also very clearly formulated the rule of application of recommendatory legal acts. In the case in question, the person concerned relied on World Health Assembly resolution WHA46.19 "Non-proprietary names for pharmaceutical substances" of 12 May 1993. This resolution sets forth a request for member states to develop policy guidelines on the use and protection of international non-proprietary names (INN) for pharmaceutical substances, and to discourage the use of names derived from them, and particularly names including established stems, as trademarks. But there has been no and there is no legislation adopted in Lithuania which would implement the said recommendation. The Lithuanian Supreme Court noted this, specifying that neither international, nor the EU, nor the national legal acts on registration of trademarks and requirements applicable to registration, included any direct application provisions expressly repeating the said recommendation. But, at the same time the Lithuanian Supreme Court also stated that the indicated circumstances do not mean that in interpretation and application of legal acts on registration of trademarks and requirements applicable to registration, certain general worldwide guidelines under formation are not relevant and important. But another important issue is the character of such guidelines (in this case and in this stage it is only recommendatory but not imperative) and their possible direct impact, in search of a reasonable balance between a person's intention to acquire exclusive rights to a certain sign by registering it as its own trademark, and the cases when it must be decided to refuse to register a sign as a trademark because of absolute requirements applicable to trademarks.



For further information on this topic please contact "METIDA Law firm of Reda Zaboliene" by telephone (+370 5 2490830) or by fax (+370 5 2490833) or by e-mail (patent@metida.lt)