June 2021 • PharmaTimes Magazine • 32-33
// TRADE MARKS //
Should pharma companies consider protecting the shape of their products?
By Rebecca Anderson-Smith
Most people will be familiar with the fact that brand names and logos can be registered as trade marks in the majority of countries worldwide. However, there are other lesser-known types of trade marks which can be protected in a number of jurisdictions. One that is particularly relevant to the pharma sector is shapes.
What shapes can be registered?
A unique or memorable shape to a product or its packaging can, in some circumstances, function as a badge of origin, a role traditionally performed by the brand name and logo. Of course, the more iconic a shape becomes, the more likely it is that it will be copied, causing confusion. A case of mistaken identity in the pharmaceutical sector can have very serious consequences. Trade mark registrations for shapes which are key to your branding, such as blister packs, tablets and bottles, can be used to try to prevent third-party use of identical and similar shapes for similar products.
In the European Union (EU), Novartis has protected both the packaging of its cancer drug Glivec (imatinib) and the shape of the tablets themselves (with the word imprinted onto the surface of the tablet).
EUTM Registration No. 13244629
EUTM Registration No. 13228937
It is also common to protect the shape of products designed to deliver medicine, for example, Luye Pharma’s EU trade mark (EUTM) Registration No. 12927935 covering ‘rod-shaped medicine implants’ and ‘cannula devices for holding and administering rod-shaped medicine implants’; and AstraZeneca’s EUTM Registration No. 5695341 covering ‘inhalers’.
EUTM Registration No. 12927935
EUTM Registration No. 5695341
What are the challenges?
To be accepted for registration as a trade mark in the UK and EU, the representation of the shape must comply with a number of criteria established by the Court of Justice of the European Union. It must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. For a 3D shape, this is likely to require submission of several images from different angles.
In addition, the shape must be distinctive enough to function as a badge of origin. Shapes are often not considered to fulfil this role as a matter of course, as consumers will typically see them as decorative or functional, rather than as indicating the origin of the product. This can lead to objections from the trade mark offices.
By way of example, Abtei Pharma Vertriebs’ application to register a pill shape under EUTM Application No. 6093141 was refused on the grounds that the disc shape of the pill is commonplace and that the other main feature, namely the grooves, is purely functional, facilitating the breaking of the pill into two or more pieces.
EUTM Application No. 6093141
Gathering and filing evidence of extensive use and arguing that consumers have come to see the shape as a trade mark through use may help to overcome an objection like this, but it can be a laborious and costly exercise. Furthermore, if the application is an EU trade mark application, it is likely that evidence from across the whole of the EU will be needed, whereas many companies will have only sold their product in certain specific countries.
One way round this problem can be to include additional distinctive elements in the shape when filing the application. Pfizer’s EU trade mark registrations for the shape of its Viagra (sildenafil) ‘little blue pill’ include the Pfizer name as it appears on the tablet and therefore no evidence of use was required for registration.
EUTM Registration No. 1909472
If choosing this option, it will be important to bear in mind that the additional words will also be taken into account when assessing whether there is infringement in the future. If the contested shape does not contain an element similar to the distinctive word contained in the registered shape mark, there may be no risk of confusion on the part of consumers. Furthermore, if the mark is not used as registered for five years or more, it is likely to become vulnerable to cancellation for non-use.
‘A unique or memorable shape to a product or its packaging can, in some circumstances, function as a badge of origin, a role traditionally performed by the brand name and logo’
UK and EU trade mark law also include some specific provisions which preclude marks from registration if they consist exclusively of (a) the shape or another characteristic that results from the nature of the goods themselves, (b) the shape or another characteristic of the goods that is necessary to obtain a technical result, or (c) the shape or another characteristic of the goods that gives substantial value to the goods.
Pharmaceutical shapes may be particularly vulnerable to objections based on technical function. In October 2012, Novartis applied to register the following mark:
EUTM Registration No. 11293362
Registration was granted in March 2013 in respect of ‘Pharmaceutical preparations for the treatment of dementia of the Alzheimer’s type’. The registration corresponded to the product Exelon, administered by transdermal patch, which enjoyed patent protection until July 2012. The active pharmacological substance was rivastigmine.
Shortly after registration, SK Chemicals GmbH, which manufactures generic medicinal products, including transdermal patches for the administration of rivastigmine, applied to cancel the registration.
The EUIPO concluded that all the essential elements of the mark, namely the square shape of the patch, the overlapping protective plastic layer represented by the white stripe in the background of the mark, the circular area in the centre and the arrangement of knobs around the central circular area, were all designed to perform a technical function. The registration was therefore declared invalid, a decision which was upheld on appeal.
Novartis still owns trade mark registrations for variations of the mark with additional elements, but this particular registration could have potentially broadened its rights.
Can shape marks be enforced?
The circumstances in which it will be appropriate to try to enforce a shape mark are likely to be more limited compared to enforcement of more traditional trade marks. In addition, in view of their weaker inherent distinctiveness, they may have a more limited scope of protection and you may be required to submit supporting evidence. However, if validly registered, shape marks can be enforced effectively, just like any other type of trade mark.
To illustrate this, we can consider a case decided by the Board of Appeal of the EU Intellectual Property Office from 2019. An EU trade mark, No. 9849191, registered for ‘inhalers’ and ‘inhalation products used for the treatment of asthma and chronic pulmonary disease’ was found to be invalid and cancelled following a challenge by Glaxo Group based on their Hungarian Trade Mark Registration No. 173643 for a similar shape, which covers ‘inhalers’.
EUTM Registration No. 9849191
Hungarian Registration No. 173643
A shape trade mark registration can therefore be a valuable asset to your business if you are able to navigate the potential pitfalls along the way to registration.
Rebecca Anderson-Smith is a partner and chartered trade mark attorney with IP firm Mewburn Ellis LLP