8 Insights into Challenges of Trademark Management in the Pharma Industry - Q&A with Tiffany Walter from Roche

Zac Casstevens,

Today the global pharmaceutical market is booming. According to our recent report into Trademark Activity in the Pharmaceutical Industry, in the USPTO alone over the past 10 years, overall trademark filing activity increased by 59%, from over 294 thousand in 2008 to 469 thousand in 2018. And, the EUIPO received 76% more applications in 2018 (123 thousand), when compared to 2008 (70 thousand). 

While all trademark candidates face similar challenges at the development and registration stage, there are some unique issues when developing new brands in the Pharma industry for trademark professionals. With these challenges in mind, our Trademark Specialist Zac Casstevens hosted a live webinar recently on the effective management of trademarks in the Pharma industry with Tiffany Walter, Head of Pharma Trademarks at F. Hoffmann-La Roche AG. 

Webinar with F.Hoffman-La Roche AG

During the webinar we shared our data insights into recent Pharma trademark activity. And, Tiffany Walter expanded on the main challenges of trademark management, including issues related to trademark screening and filing, as well as brand protection. 

Tiffany Walter kindly took questions from the audience on the day and we share these with you now, together with her responses. We hope that you find our Q&A on the challenges of trademark management in the Pharma industry beneficial and if you have any questions that you would like answered please share them with us. We will respond directly to your questions very shortly. Please just add your questions in the comments panel below! 

Q&A with head of Pharma trademarks,Tiffany Walter

1. Do laboratories usually have a pool of trademarks?

I assume you mean the Trademark Department, which manages the trademark portfolio. As you can imagine from time to time, when you file several trademarks for one project, you might be in a situation where you just use one of them. Maybe you have found the single global trademark which is available all over the world, the perfect case scenario. In such a situation, you could use the remaining, not used names, as potential backups for other projects of course. 

In this regard, you need to consider the following: Sometimes when you start a new project with new marketing people and a different agency, they often have an interest in creating new names, because they want to give fresh directions for name creation. Of course it is worth considering existing names in our backup portfolio because we have already done a lot of work. And, there has been a lot of research that has been done already. The search report of such a name needs to be updated, of course. 

On the other hand, it also depends on how the name has been created. So for instance, one possible way to create a name is to use a name which is created mainly based on the INN - the nonproprietary name for a pharmaceutical product. If your name is close to the INN, you probably will not be able to use it for another product with a different INN, because it can be misleading. 

So with that, my answer to the question would be yes, it depends. In case you use a backup name for another project, the agency will check it, then you do the legal screening and if the name still ends up in an available name category, you might use it for another project.

2. What are some immediate regulatory considerations we should keep in mind for those who are not highly specialized on a regulatory end?

Well, we also have regulatory experts who could answer these questions more precisely. In general, you need to consider that the name will be assessed with regard to the safety aspect. 

As mentioned earlier, you don’t want to have a consumer or a healthcare professional being confused by a name, because it could be confusingly similar to another name of a product that is already on the market, or a product where the other company has already handed in their submission at the same time. 

Therefore it is very important to do safety checks, which is done by the branding agencies, also in alignment with the internal regulatory experts. 

3. Staying on the regulatory side of things. Do you also keep an eye on regulatory registrations for trademark infringements or only when the products are on the market?

I would say when the product is on the market if you mean trademark infringement cases. With regard to potential conflicts at the Trademark Office level, we do monitor the names at the time where we file them.

4. What is the biggest challenge in managing a trademark pharma portfolio?

I think the biggest challenges are a new project, most importantly, creating low risk names and also, the timing of filing. You also need to consider what you already have in your existing portfolio to be able to define a new name for a new project. 

As mentioned earlier, you cannot start too early with a project, but you also cannot start too late. This is one main challenge with regard to brand naming and assisting in any brand naming project. 

Apart from that, a lot of the maintenance work is challenging. Some things are standard, so you need to make sure you renew your trademarks and cover all territories where you still have an interest in the marketing of the product. You also need to keep an eye on the proper use.

5. As you mentioned earlier, protecting trademarks in all countries across the world is incredibly costly. What then is your strategy for opposing trademark applications in countries where trademark registration was not sought by your business?

It also depends, I would say. I mean, if we have a new promising product we will file oppositions even if it’s in a market where the product is not yet in use - because it can be the case that it will be in use shortly after. Of course you also try to file the trademarks only in those markets where the product will be sold, but for a promising product, you might also include some markets, which could fall out of interest at a later stage. 

But apart from that, we just simply need to make sure that the trademarks are in place in the countries where the product is sold.

6. For a major global product like that, how common is it for a name to be cleared in all markets of interest?

It’s tough. The registries are fully packed with names. I also mentioned that there are some trademark owners who file a lot of names which will not be used. Although they will become attackable for cancellation actions after 3-5 years, they are there for quite a time. I think it’s very challenging and it gets tougher and tougher to find a single global trademark, especially at the level where the agencies need to create hundreds of names, but still it is our first and main goal to have a single global trademark. 

7. When should pharma companies announce their new brand names for products?

This is a decision taken by the business. Of course they should not announce the name where later on, on the regulatory or trademark side you see that the name cannot be used. The alignment between trademark department, regulatory, marketing and other business colleagues is crucial. Our colleagues in the marketing departments are asking us whether we have the relevant registrations in place in the most important countries. Of course, these decisions also depend on the project and launch timelines.

8. Besides searching trademarks within trademark offices in classes 3, 5 and 44, does a screening search for a pharma mark look at other databases? Maybe common law?

We look at common law information. We get this information from service providers. We do preliminary screenings and then consult databases such as TrademarkNow, looking out for potential “killer obstacles”, like identical trademarks or confusingly similar trademarks.

Later, we move on with a small group of names, for which a full screening will be conducted. We receive all the data from our service provider and we go through all the documentation. After having a picture with regard to the risk of each name, the risk report, including a recommendation, is presented to the marketing team.

Learn more 

Our eBook report on “Trademark Activity in the Pharmaceutical Industry” includes a more detailed overview of the Pharma data presented in the webinar with additional data analysis in Pharma-related Nice classes 1,3, 5, 10 and 44 and also includes commentary from our trademark analysts.

DOWNLOAD: Report on Trademark Activity in the Pharma Industry

By Zac Casstevens
Zac Casstevens, Trademark Specialist at TrademarkNow, works with the sales and marketing team, the customer success managers and management, to provide a high level of support for customers with complex trademark processes. In his spare time he is a keen surfer and also enjoys fishing.