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Pharmatheutical trade marks in Russia

On December 2-3, 2003 the Russian Patent and Trade Mark Office (hereinafter ROSPATENT) conducted a conference on legal protection of intellectual property in the field of medicine. Some of the reports touched upon the practical aspects of pharmatheutical trademark protection in Russia.

An illegal use of registered trademarks and unfair competition in respect of the names of medicines and trade marks were identified as serious problems arising in this connection.

Radical changes, which have taken place in the economics of Russia in the last decade, have also brought about abolition of the previous system of centralized production and distribution of medicines. This is enabling individual suppliers of the pharmatheutical market to compete, provided certain provisions of the law are kept to. It has manifested itself first of all in the drastic increase of the number of manufacturers and the number of medical preparations produced by them. Compared with 1991 level the number of manufacturing factories has risen from 300 to 1500 and the number of medical preparations has increased from 3,000 to 17,000.

It is felt that use of thousands of medical preparations on such a large scale is not always performed rationally nowadays and the advertising of medical preparations among broad masses of consumers promotes some adverse side effects and even brings about negative economic and social consequences.

It was stressed during the conference that this situation calls for an increase of the State control over medical preparations, due to their being of paramount social importance and potentially dangerous for the health of a human being.

The legal foundation of such control is already there. It is provided for by the Federal Law "On medical preparations" of 1998, which regulates relations connected with elaboration, manufacture, pre-clinical and clinical tests, trade and other aspects of the circulation of medical preparations.

The Ministry of Health is a Federal Executive Authority empowered to conduct the quality control over medical preparations in the territory of the Russian Federation.

There is a special establishment within the framework of the Ministry of Health, which conducts the examination of the names of medical preparations proposed by applicants.

However a certain contradiction in this process becomes apparent due to the existence of some requirements by the Russian Trade Mark Law regulating the examination of trademark applications.

Economics determine that every manufacturer of medicine is anxious to use a certain sign, which turns out eventually to be registered as a traded mark and which is a key element in advertising thus promoting medical preparations on the market. Consequently a lot of names presented for registration at the Ministry of Health are deprived of any objective characteristics of their being therapeutically effective, do not provide for the consumer's security and thus are refused registration there.

Therefore taking into consideration contradictory aspects of the registration of names of medical preparations proper and that of pharmaceutical trade marks the examination of the names of medical preparations turns out to be a complicated problem.

The Examiners at the ROSPATENT use certain publications to determine whether or not a name of a medical preparation may be registered as a trademark. These publications help to determine if a name is in general use and has lost its distinctive character. However it is rather difficult to state unequivocally that a certain name is generally used. On the other hand there is no guarantee that those sources of information contain a complete list of manufacturers of medicines. Any data on contractual relations between manufacturers is also lacking. The role of the Ministry of Health is thus evidently very important in this respect.

To avoid conflicts between the rights on trade marks and those on names of medicines the ROSPATENT is preparing proposals on some improvements of the trade mark legislation as well as elaborating methods of examination of the applications of trade marks destined to be used as pharmaceutical trade marks. The ROSPATENT manifests its interested in closer cooperation with the Ministry of Health on these subjects in future.

However there are some practical steps which have been recommended at the conference even now in this field.

Since December 27, 2002 the modified Russian Trade Mark Law provides for additional possibilities of trade mark protection in Russia. The new version of para 1 Article 6 of the said Law enables one to have signs registered as trade marks, which did not originally possess a distinguishing character but acquired it in the course of use during a long period. Words of descriptive character pointing to the contents and destination of a medicine may appear to be just such signs.

Besides some of the "names" of medicines may be declared to be well known trade marks using the new provisions of Articles 19(1) and 19(2) of the modified Trade Mark Law.

Taking into consideration the fact that one and the same medicine is often produced by a number of factories it is advisable to use the possibility of the registration of so called "collective marks" according to the provisions of Article 20 and 21 of the said Law.