During the period of outbreak of COVID-19, Remdesivir, which has not entered into Chinese market as a new drug, has attracted public attention. However, since February 3, 2020 to date, there have been many different types of malicious trademark filings related to Remdesivir. It is worthwhile to reflect on the protection of Remdesivir and "new drugs" within the framework of Trademark Law in China.

1. Existent trademark applications related to Remdesivir filed on bad faith and corresponding countermeasures.

(1) Filing "瑞德西韦 (Remdesivir in Chinese)" and Remdesivir together or separately as trademark applications.

瑞德西韦and Remdesivir are both International Nonproprietary Names (INN) approved by the World Health Organization (WHO) 1, namely drug generic name. Since the outbreak of COVID-19, there have been malicious trademark filings for the combination of 瑞德西韦 and Remdesivir.

Filing Number

Trademark

Class

Filing Date

43982344

瑞德西韦 REMDESIVIR

5

Feb. 3, 2020

44105588

瑞德西韦 REMDESIVIR

19

Feb. 17, 2020

Within just ten days from Feb. 3 to Feb. 12, 2020, there have been 55 trademark applications for Remdesivir covering almost all categories of goods and services, including not only Class 5 for medicine, Class 10 for medical apparatus, but also Class 9 for electronic products and Class 3 for cosmetics. The list of malicious trademark applications in Class 5 is as following:

Filing Number

Trademark

Class

Filing Date

43984432

REMDESIVIR

5

Feb. 3, 2020

43992460

REMDESIVIR

5

Feb. 4, 2020

4398165

REMDESIVIR

5

Feb. 5, 2020

43999033

REMDESIVIR

5

Feb. 5, 2020

44013930

REMDESIVIR

5

Feb. 7, 2020

44017075

REMDESIVIR

5

Feb. 7, 2020

44022541

REMDESIVIR

5

Feb. 8, 2020

44052194

REMDESIVIR

5

Feb. 12, 2020

(2) Filing Chinese trademarks similar to 瑞德西韦 (Remdesivir in Chinese).

The Chinese marks in the list on the right is substantially similar to 瑞德 西韦(RUI DE XI WEI) (Remdesivir in Chinese) and can hardly be differentiated from 瑞德西韦(RUI DE XI WEI)

Filing Number

Trademark

Class

Filing Date

43982344

瑞德西维 (RUI DE XI WEI)

5

Feb. 3, 2020

44079899

瑞德思维(RUI DE SI WEI)

12

Feb. 14, 2020

44020747

瑞德韦 (RUI DE WEI)

5

Feb. 8, 2020

44019920

瑞德西 (RUI DE XI)

5

Feb. 8, 2020

44012880

瑞德西伟 (RUI DE XI WEI)

35

Feb. 7, 2020

44009512

瑞德西弗 (RUI DE XI FU)

5

Feb. 6, 2020

44006580

瑞德西威 (RUI DE XI WEI)

5

Feb. 6, 2020

44004155

瑞德西维 (RUI DE XI WEI)

3

Feb. 5 2020

44002988

瑞德西维 (RUI DE XI WEI)

35

Feb. 5, 2020

44001843

瑞德西维 (RUI DE XI WEI)

25

Feb. 5, 2020

It is very possible that the abovementioned trademarks, especially the marks, which are the same with " 瑞 德西韦 (Remdesivir in Chinese)" and Remdesivir will be directly refused by China National Intellectual Property Administration (CNIPA) for the following two reasons. Firstly, during the outbreak of COVID-19, these trademarks will cause negative social influence. Secondly, they are the same with INN, namely generic name of drugs and therefore they lack distinctiveness, a basic requirement for being a trademark.

However, in normal times, it may be difficult for Chinese Examiners to recognize a mark the same with or similar to a foreign INN name, because they are usually composed of dozens of letters. Therefore, pharmaceutical companies should establish their own watch system to find out such marks and take actions in time, such as opposition and invalidation.

  • How to prevent registrations of malicious trademark applications the same with or similar to INN.

INN is filed by pharmaceutical company and is approved by WHO. Before a new drug is launched in China, it has obtained an INN from WHO. Therefore, these INNs are facing the risk of being filed by others as a trademark in China.

The following two cases can prove that Art. 11. 1. (1) of Trademark Law is a strong and effective article in taking actions against malicious trademark filings, which is the same with or similar to INN of a new drug.

Case 1: In decision for opposition against trademark "Solanezumab" in Class 5, the Trademark Office in China decided that Solanezumab is a generic name for a drug that slows down the progression of Alzheimer's disease and according to Art. 11. 1. (1) of Trademark Law, it should not be registered as a trademark.

On November 23, 2016, Lilly announced that the third-phase clinical trial of Solanezumab did not achieve the expected results2. However, as a general name of the drugs that the enterprise has invested heavily in R & D, if Solanezumab is registered as a trademark on "medicine for human use", it will inevitably lead to negative effects.

Case 2: In decision for invalidation against Reg. No. 23902984 Omadacycline, the CNIPA decided that before the filing date of the disputed trademark, Omadacycline has become a generic name for antibiotic drugs, and the disputed trademark is exactly the same with the generic name. The use of the disputed trademark on "medicine for human use" has constituted the situation referred in Article 11. 1 (1) of Trademark Law. The use of the disputed trademark on "nutritional supplements, dental grinders, veterinary drugs" is difficult to be distinguished from the source of the commodities, which constitutes the situation referred in Art. 11. 1. (2) of Trademark Law.

(3) Filing "伦地西韦 (LUN DI XI WEI)", which was a widely-used Chinese name for REMDESIVIR, but not an officially-approved INN in Chinese for REMDESIVIR, as a trademark.

Although " 瑞德西韦 (RUI DE XI WEI)" is the Chinese INN name of Remdesivir approved by WHO, " 伦地西韦 (LUN DI XI WEI)" has once been widely used as the corresponding name for Remdesivir. Searching for " 伦地西韦 (LUN DI XI WEI)" as a key word through Baidu leads to around 501,000 items referring to Remdesivir. Searching for the combination of " 伦地西韦 (LUN DI XI WEI) & Remdesivir" as a keyword leads to about 190,000 items.

Some new drugs, which have not entered Chinese market, will receive high attention from Chinese market because of their obvious therapeutic effects. Public concern will actively create Chinese names for them based on their generic names in foreign languages. " 伦地西韦 (LUN DI XI WEI)" is a Chinese name for Remdesivir occurred under this status. Although " 伦地西韦 (LUN DI XI WEI)" is not an INN approved by WHO, it was a widely-used Chinese name for Remdesivir, from Feb. 4, 2020 to date, the trademark applications are as following:

Filing Number

Trademark

Class

Filing Date

44028231

伦地西韦 (LUN DI XI WEI)

5

Feb. 10, 2020

44026740

伦地西韦 (LUN DI XI WEI)

3

Feb. 10, 2020

44002739

伦地西韦 (LUN DI XI WEI)

1

Feb. 5, 2020

43993816

伦地西韦 (LUN DI XI WEI)

35

Feb. 4, 2020

  • How to prevent registration of trademark filings, which is the same with widely-used Chinese name for INN of a new drug.

Case 1: Both Trademark applications No. 35638097 苏 金单抗 in Class 5 and No. 35641841 苏金单抗 in Class 35 have been directly refused by the CNIPA.

Secukinumab is a new drug for the treatment of psoriasis. The drug has been widely praised since it was approved by FDA in 2015. The drug has not been approved for marketing in China until April 2019. Before that, due to the excellent efficacy of the drug, it had drawn high attention from relevant Chinese professionals and patients. Many psoriasis patients went to Taiwan and Hong Kong for treatment by using this drug. A Chinese name " 苏金单抗 (SU JIN DAN KANG)" was created by relevant public based on Cantonese pronunciation of "Secukin" and the meaning of "-mab" in Secukinumab. Fortunately, malicious trademark filings the same with this Chinese name created by the public concern have been direly refused by CNIPA.

New drug R & D enterprises should pay attention to whether their new drugs have been "loved" by the public concern, and whether they have obtained Chinese name, which is created and accepted by the relevant public. The combination of Article 11. 1(1) and Art. 10. 1 (7) of Trademark law can effectively prevent such malicious trademark filings from being registered in oppositions against them.

2. Other types of malicious trademark applications related to "Remdesivir", which may occur in the future and countermeasures.

(1) After the brand name of Remdesivir is decided, there may come malicious trademark filings, which are the same with its brand name in English and Chinese.

  • How to prevent registration of trademark applications, which are the same with brand name of a new drug.

Notice on Further Standardizing of Management of Drug Names issued by the State Food and Drug Administration in 2006 stipulated that "Except for drugs with new chemical structure, new active ingredients, and drugs with compound patents, brand name cannot be used for all other drugs." Since then, there has been no more than 100 new drug brand names in China every year3.

The above proves that only drugs with new chemical structure and new active ingredients are entitled to obtain a brand name. This is an encouragement and support for innovative drugs. Therefore, it is also of great significance to protect brand names of new drugs under the Trademark Law.

Case 1: Zejula is the brand name of a new drug developed by TESARO for the treatment of prostate cancer. Its generic name is Niraparib4. Although TESARO and her partner "Zai Ding Pharmaceutical (Shanghai) Co., Ltd." have both tried to register Zejula as a trademark on "human medicine" in Class 5, these applications have been refused because of citation of prior similar mark No. 23560459 ZEJULIA on similar goods. TESARO has filed opposition against this prior similar mark5.

It is believed that TESARO will continue to make efforts to obtain trademark registration for Zejula on "human medicine". Submission for sufficient evidence proved that the opposed trademark is the same with or similar to their brand name and the use of opposed mark on pharmaceutical preparations is likely to mislead consumers regarding functions and raw materials of the goods can effectively prevent the registration of such trademarks.

(2)There may come malicious trademark filings, which include the INN stem "-vir" in Remdesivir and INN stem "- 韦 (-WEI)" in 瑞德西韦 (RUI DE XI WEI).

  • How to prevent registration of trademark applications, which include INN stem of new drugs.

All substances belonging to the same drug or chemical family are pharmacologically related, and the INN names of members of the same family contain the same "stem". Practitioners, pharmacists and other people who deal with drugs can identify these substances as a group of drugs with similar pharmacological effects through "INN stem".

The INN stems in Remdesivir and 瑞德西韦 (RUI DE XI WEI) are respectively "-vir" and "- 韦 (-WEI)". The drugs whose INN names containing this stem are antiviral drugs. For example, antiviral drugs "Peramivir 培拉米韦 (PEI LA MI WEI)", "Adefovir 阿德福韦 (A DE FU WEI)", among which "-mivir, - 米韦 (-MI WEI)" and "-fovir, - 福韦 (-FU WEI)" represent the antiviral effect of these drugs.

WHO's "Guidance on INN" stipulates that in order to avoid confusion that may endanger the safety of patients, trademarks shall not be derived from INN, especially shall not contain INN stem, which is usually used. However, in practice, there is still the case that trademark applications containing INN stem, such as the followings.

Filing Number

Trademark

Class

Filing Date

12110359

新感米韦 (XIN GAN MI WEI)

It includes INN stem "-mivir, -米韦 (-MI WEI)"

5

Jan. 28, 2013

13931085

赛若福韦 (SAI NUO FU WEI)

It includes INN stem "-fovir, -福韦 (-FU WEI)"

5

Jan. 17, 2014

In some cases, the CNIPA has supported opponent's claim that the opposed mark should not be approved for registration, because it includes INN stem.

Case 1: In the opposition against trademark application "Mefatinib" filed in 2013, the Trademark Office ruled that the evidence provided by the opponent can prove that "-tinib" is an INN stem. Drugs whose name including the stem "tinib" are mostly anti-tumor drugs. The opposed mark contains "-tinib" and is used on "tonics, medical and veterinary bacteriological research preparations" in Class 5. The opposed mark is likely to make consumers recognize the composition, function, use and other characteristics of the its designated goods by mistake. According to Art. 10. 1. (7) of Trademark Law, the opposed mark should not be registered.

Because of its potential market value, new drug is likely to become the object of malicious trademark application. Malicious applications can occur in various types as above-mentioned. Making good use of the relevant provisions of Trademark Law can make a powerful combination against malicious trademarks filings related to new drug. No matter during the epidemic period, or in normal time, China has provided full-round protection to "new drugs" under the framework of Trademark Law, which is conducive to the realization of the economic merit of new drugs for pharmaceutical R & D enterprises and the social significance of new drugs in the protection of public life and health.

Footnotes


3. March 16, 2006, "Ren Min Wang", "No brand name will be approved since this June for generic drug."

5. Decision for review on refusal against App. No. 29024393 "ZEJULA& Device"

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.