A Problem for Pharmaceutical Trade Marks

Confusion between Angola and the WHO on Pharmaceutical Trade Marks
The Angolan system is very similar to that of the UK Intellectual Property Office (UKIPO). An examiner from the IAPI examines the trade marks to see if they will pass. Once they have passed this stage this goes onto the Industrial Property Bulletin.

Despite their vigorous examination procedure, there has been noted some complaints, showing incorrect regulation in a number of applications. These applications have shown to violate the INN rules as set out by the WHO.

In order to identify a trade mark name for a pharmaceutical product, these are decided between the WHO and INN. The WHO’s mandate is to: “develop, establish and promote international standards with respect to biological, pharmaceutical and similar products”.

When naming a pharmaceutical product and registering for its trade mark, these should not contain ‘common stems’ found in INNs. Trade mark ownership can only be obtained by the INN. Compliance to these rules therefore belong solely to IP offices and the WHO.

A recent trade mark application in Angola for, DEXAMEX in class 5 (medicines) was found to violate WHO and INN terms as it noted the active ingredient in the pharmaceutical product. Despite confusion on whether Angola has to comply to the rules set out by WHO and member WIPO states, can be clarified in Article 77 which notes that Angola is an member of the international convention therefore it is mandatory they comply with current laws. As a result, it could therefore also be argued that this trade mark is descriptive of the goods and services for which the registration is sought and therefore would fail by the examination board under the absolute grounds for refusal.

Despite these clear cut laws, there is an issue that lies with the Ministry of Health, to which Angola cooperates with on such matters. This states Angola are not breaking rules set out by WHO at the time of the application and therefore can proceed with such trade mark.

The confusion between legal grounds for refusal could result in further appeals later on for INN and WHO trade marks. Despite this confusion between laws, there is a positive impact on intellectual property as a whole. Showing this, time consuming process represents commitment in IAPI laws and compliance with international regulations.

If you have any questions regarding trade marks, please do not hesitate to contact the Trademarkroom team today.

Anna Orchard

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