Sarah Hébert-Tremblay, Johanne Auger
Pharmaceutical and medical products are no exception to the fierce competition between companies to make their products stand out.
However, finding a trademark for this type of product requires special considerations, mainly because of a specific Health Canada policy that applies to these products, in addition to the general criteria provided in the Trademarks Act.
Upon introducing the policy, now entitled Guidance Document for Industry - Review of Drugs Brand Names, Health Canada calculated that confusion between health product names was the cause of one in four medication errors.
The Canadian trademark law regime is designed to protect consumers from being misled as to the source of the product they are purchasing. Still, it is not entirely suited to avoid confusion between different products with similar names that may have different health effects, particularly if they all come from the same manufacturer. For the well-being of Canadians, the federal government has therefore deemed it necessary to adopt measures to reduce actual and potential confusion between different health products.
As a result, human prescription drugs, veterinary drugs and medical devices have all been governed by this policy since 2006, which has since been updated to require manufacturers to obtain Health Canada's approval of their product's trademark before commercialization. Health Canada also has the authority to require a change in the trademark associated with a product if it is deemed to be confusing, even after the product has been marketed.
We noted that to assess the degree of confusion, Health Canada relies on more specific factors than those provided for in the Trademarks Act, such as:
That being said, Health Canada’s approval does not guarantee that the mark will be available for use and registration as a trademark. If it is obvious for a company in the pharmaceutical and medical field to obtain Health Canada's approval before launching a health product on the market, the verifications as to the trademark of the said product should not stop there. Verification of the availability for use and registration of the mark under the Trademarks Act must also be carried out.
The trademark of a medication must not be confused with the INN associated with the pharmacologically active substance from which it is composed.
Indeed, the INN is a trade name defined by the World Health Organization to identify a pharmacological substance. No one can own this name. In Canada, a trademark that also consists in an INN, or its phonetical equivalent, will be considered descriptive and lacking distinctive character. As for trademarks that are variations of INN, they would potentially be registrable, but their protection would likely be very limited. Indeed, such marks could potentially coexist with other similar marks inspired by the same INN which no one can monopolize.
In conclusion, when launching a new pharmaceutical product, it is essential to consult with trademark law professionals in addition to the measures taken in order to obtain Health Canada’s approval. Our team of trademark specialists has specific expertise in the field of pharmaceutical products and will be pleased to guide you through the process of availability verification for use and registration of a trademark and the related protection strategy it in Canada and internationally.
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