OLIVARES » No legal basis for banning names derived from INNs

No legal basis for banning names derived from INNs

BY VARINIA CALLEROS
International Non-Proprietary Names (INNs) are names for pharmaceutical substances or active pharmaceutical ingredients recognised as public property. They are treated as generic names by international authorities, with around 8,000 published at present.
The World Health Organisation (WHO) provides guidelines for its member states, of which Mexico is one, on the use of INNs – particularly to prevent registration of INNs and names derived from them that comprise INN prefixes or suffixes (so-called stems).
It is common practice for pharmaceutical companies to include INNs or stems as part of their trade marks, which creates conflicting situations for the Mexican Trademark Office.
On the one hand, only registration of generic names is prohibited under Section II of article 90 of the Mexican Industrial Property Law, which establishes that the following cannot be registered as trade marks: “II: The technical names or common usage of the products or services the trade mark intends to cover as well as words that, in the common language or commercial practice, have been converted into the usual or generic designation of the same.”
Accordingly, the Office has no legal basis to refuse a trade mark that comprises a stem or INN as long as it includes additional distinctive elements that make the trade mark registrable as a whole.
On the other hand, INNs are generic and cannot be treated otherwise, which makes it impossible for the TMO to assess the likelihood of confusion between pharmaceutical trade marks and INNs.
So it is hard for the Office to follow the WHO’s recommendations to safeguard the proper use of INNs and avoid registration of trademarks derived from them without an amendment to article 90 of the Law.
Source: International Briefings, Managing Intellectual Property Magazine, Nov 2010.