INTA's Trademark Reporter Ukraine case summary - Other Types of Marks (Thalidomide Celgene)

By Dina Petosevic, published in the March/April 2012 edition of the IAR Trademark Reporter

Celgene Corporation, a multinational biopharmaceutical company based in the United States, applied for an International Registration for the word mark THALIDOMIDE CELGENE, for goods in Class 5 (pharmaceutical preparations used to treat cancers and immune-related diseases), extending the registration to Ukraine, among other countries. (IR No. 982991, registered Oct. 23, 2008.) On October 29, 2009, the Ukrainian IP Office issued a provisional refusal of the registration, claiming that the appliedfor trademark consists exclusively of signs that are commonly used as the signs for goods and services of a certain kind. (Article 6, p. 2 of the Law on Protection of Rights to Marks for Goods and Services, Dec. 15, 1993, as amended, provides that legal protection shall not be granted for marks that consist exclusively of marks that are commonly used as the marks of goods and services of a certain kind.)

On July 26, 2010, Celgene, through its representative, filed a response to the provisional refusal. As one of the arguments in support of registration, Celgene pointed out that it owns an International Registration for the mark CELGENE (covering goods in Class 5) which is valid and widely used in the countries of the European Economic Area, the United States, Ukraine, Russia, and other jurisdictions. Celgene explained that it was interested in protecting the applied-for trademark THALIDOMIDE CELGENE in order to distinguish its products from the products of other manufacturers of thalidomide and to protect itself from possible counterfeits. It emphasized that it had no intention to obtain an exclusive right to use THALIDOMIDE as a trademark.

In order to overcome the refusal, Celgene also decided to limit the list of goods to “pharmaceutical preparations containing thalidomide used to treat cancers and immune related diseases,” thus confirming its intent to cover only pharmaceutical preparations containing thalidomide with the trademark THALIDOMIDE CELGENE.

In addition, Celgene submitted the evidence of registration of THALIDOMIDE CELGENE with a disclaimer of THALIDOMIDE in other jurisdictions, including the United States, Great Britain, Norway, Ireland, Switzerland, Benelux, Australia, Turkey, Hungary, etc.

Furthermore, Celgene’s representative turned the attention of the Examiner to the provision of the Guidelines on the Use of International Nonproprietary Names (INNs) for Pharmaceutical Substances and Resolution WHA46.19, according to which “registration of an INN together with a firm’s name is perfectly acceptable, as long as it does not prevent another manufacturer from using the same approach.” Taking into account that the CELGENE part of the trademark was indeed part of the firm’s name, it was emphasized that there was no reason why THALIDOMIDE CELGENE could not be registered with a disclaimer of THALIDOMIDE.

The examiner did not accept these arguments and upheld a provisional refusal. On October 6, 2010, Celgene filed an appeal before the Appellate Board of the Ukrainian IP Office, asking that the refusal issued by the examiner be reversed based on the same arguments.

The Appellate Board accepted the arguments and ruled in favor of the THALIDOMIDE CELGENE registration for a limited list of goods with a disclaimer of THALIDOMIDE. The Board’s decision was confirmed by the order of the Ukrainian Institute of Industrial Property (No. 144-H, Dec. 30, 2010), and on January 25, 2011, the Institute sent a notification on the final decision to WIPO.

With this decision, the previously uncertain practice of the Ukrainian Institute of Industrial Property with regard to registration of trademarks containing INNs was clarified.