MEDICAL TRADEMARKS
COFEPRIS decisions regarding medicinal products are completely independent from what the IMPI may decide regarding distinctive names, which of course are trademarks according to the IPL.
Unfortunately, there is not yet a clear and specific link between the IPL, the MHL and the MHL regulations (the HLR) regarding conflicts between registered trademarks and marketing authorisations/distinctive names.
As mentioned, IMPI examiners usually take into consideration the ‘three letters’ rule when analysing the similarity of trademarks for pharmaceutical products, though this rule (provided by the HLR) is not binding for IMPI Examiners.
On the other hand, COFEPRIS is not bound by
registrations (for when analysing the similarity of
the HLR to consider senior trademark pharmaceutical products) distinctive
names by means of their own tool: soſtware developed to apply the three letters rule.
Tis situation causes undesirable scenarios such as contrary decisions issued by IMPI and COFEPRIS regarding the likelihood of confusion for the same trademarks and distinctive names.
Furthermore, IMPI and COFEPRIS have different databases. Te IMPI database comprises all the trademark applications and registrations that have been filed with the agency or
its predecessors. Te COFEPRIS database
contains only all the distinctive names allowed for medicinal products, regardless of whether the distinctive names are currently in use.
Marketing authorisations used to be granted for an unlimited period of time, until amendments in 2008 to the HLR. Since those amendments came into force, marketing authorisations have been granted for renewable, five-year periods. Marketing authorisations granted before the amendments should have been renewed before February 2010. It is not yet clear whether COFEPRIS will remove the distinctive names for authorisations that have not been renewed.
In this scenario, a trademark infringement could be triggered by companies that have a marketing authorisation but cannot achieve trademark rights because of the different criteria and the different databases used by the two agencies.
A third difference is found between IMPI and COFEPRIS when dealing with medicinal trademarks. During
IMPI’s procedure, 54 the applicant may file arguments and request
limitation of third party rights, whereas during the COFEPRIS procedure for marketing authorisation, the applicant will not know why its distinctive name has been rejected.
Due to this lack of clarity, from 2010, COFEPRIS has offered pharmaceutical companies the possibility of obtaining a pre-approval through its website. If a three-letter coincidence is detected, the proposed name will be rejected.
If the distinctive name is approved, the system will grant the user a certificate that will last for 90 days and can be used by the applicant for any marketing authorisation. Te COFEPRIS system allows users to have up to 10 valid certificates for distinctive names that can be used by the company at any time while the certificates are valid. Once a certificate expires, the user is allowed to obtain new certificates.
However, these pre-approval certificates are
not binding and COFEPRIS may still reject the distinctive name during the marketing authorisation procedure. Although a rejection of this type may be challenged before the courts, this almost never happens.
Mexico needs a trademark linkage system between COFEPRIS and IMPI. Some attempts to do it have been proposed to Congress in the past without success. Te idea around these proposals is to require applicants to obtain a trademark registration from IMPI first, leaving COFEPRIS the authority to deny marketing authorisation when the proposed trademark indicates diseases, syndromes, symptoms, anatomical data physiological phenomena.
or Life Sciences Intellectual Property Review 2012
Victor Ramirez’s areas of practice include trying
industrial property
matters disputes and appeals, providing legal advice on litigation matters and in industrial property negotiations, and preparing licence, assignment, franchise and transfer of technology agreements. He also runs and analyses the results of availability searches for trademarks, slogans and commercial names.
www.worldipreview.com
“A TRADEMARK INFRINGEMENT
COULD BE TRIGGERED BY COMPANIES THAT HAVE A MARKETING AUTHORISATION BUT CANNOT ACHIEVE TRADEMARK RIGHTS BECAUSE OF THE DIFFERENT CRITERIA AND THE DIFFERENT DATABASES USED BY THE TWO AGENCIES.”
In May 2012, the Mexican Senate gave notice that Mexico has joined the Madrid Protocol for trademark registration. Te implications of this treaty are yet to be studied, but this change in the Mexican policy on trademarks could provide the momentum to implementing a trademark linkage system.
Daniel Sánchez is a partner at Olivares & Cia. He can be contacted at:
dsb@olivares.com.mx
Victor Ramirez is an associate at Olivares & Cia. He can be contacted at:
vrl@olivares.com.mx
Daniel Sanchez has vast experience in the prosecution and litigation of all areas of intellectual property including trademarks, copyrights, patents and unfair competition. He also specialises in enforcement matters and all types of
litigation related to
intellectual property rights and regulatory matters. He now heads a group of attorneys specifically focused on litigation before the Mexican Institute of Industrial Property and the federal courts.
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