Legal Tech & The Pharmaceutical Trademark Clearance Challenge

Nadaline Webster,

Not all trademarks are created equally and this is particularly true in the case of pharmaceutical trademarks. While all potential trademarks face similar challenges in development and registration, there are some unique issues facing those developing new brands in the Pharma industry, especially with regard to Nice class 5 (Pharmaceuticals and Medical Supplies).

According to TrademarkNow data analysis, revealed in our published report on “Trademark Activity in the Pharmaceutical Industry”, Class 5 had the highest volume of trademark applications of all Pharma-related classes from January 2008 to August 2019. USPTO trademark applications were growing steadily with an increase of 59% over the past 10 years. And, EUIPO trademark filings have also increased by 63% since 2008 in Class 5.

Volume

The naming stage of any new brand project always starts with a larger list of potential names which is then whittled down to more manageable proportions by a variety of methods. In the pharmaceutical industry though, that 'larger' list can achieve some truly awe inspiring numbers.

Initial lists of potential candidates numbering in the thousands is not unusual, and it is often down to both the marketing and legal teams to find a time and cost-efficient method of weeding out the 'no hopers’ and also-rans! The remaining (and far from small) list can then be put forth for preliminary screening to filter down further. But what if you could incorporate instant preliminary screening right into the brainstorming and name generation process in the initial stages?

Skipping the creation of a giant list, which now needs a number of processes applied, can save a phenomenal amount of time and re-handling of names that were never viable from the outset. And in circumstances where that instant preliminary screening can find impediments across every desired region simultaneously, you can solve the two key issues of both coverage and data source in one easy swoop.

1. Regional coverage

Commonly, a business will begin the search for a potential new brand name domestically first. Depending on the industry, the regions across which they do business and the goals of the company, they may then expand that clearance outwards to other regions for their key candidates. This, however, is not the case as it relates to trademarks for pharmaceutical products.

The final chosen brand name should be registrable and available for use across as many regions as possible. This is desirable for many reasons but amongst them are regulatory requirements. In Europe, for example, the European Medicines Evaluation Agency (EMEA) process for the approval of a new product relies heavily on the ability of the product to carry the same name throughout the European Union.

Combined then with the sheer volume of potential candidates needing screening, the range of regions across which this must be done creates an intimidating and expensive workload for trademark professionals in the pharmaceutical industry.

This is where advances in legal technology really come into their own. The ability to clear a potential brand name across a large number of regions simultaneously and within seconds can dramatically reduce the workload, expense and time burden across the entire project. When those results are ranked and analyzed in order of threat level, taking into account the additional regulatory requirements and extra sources of data, the end result is game-changing.

2. Additional sources

No trademark clearance search can ever be considered to be exhaustive but there are a number of critical additional data sources that must form a part of every clearance search involving pharmaceutical trademarks. 

Top marks are cleared across multiple regions and common law data sources. Our common law data contains more than 140 million public and private companies across 223 countries. Global pharma-in-use and clinical trials data along with major app store, and web and social media data are also available - all from the most reputable data providers. Full set of pharma in use data and clinical trials (including IMS Health, POCA (FDA), INN and USAN data) is available on the TrademarkNow platform.

The ability of intelligent legal technology to combine data from these multiple sources and instantaneously provide analysis of the various component parts individually and together can transform a naming process from one requiring months to days.

Reducing the costs

The expenses related to the screening and clearance of vast quantities of names over substantial numbers of regions is difficult to both quantify and convey. Pricing packages that provide intelligent, labour reducing clearance that is unlimited by either volume of searches or region can create a predictable, transparent annual cost. 

Not only does this assist in terms of creating clarity internally around the costs of such projects but it supports trademark professionals, both in-house and in private practice, to achieve the elusive business partner status. Being able to meet whatever branding needs are required within tight timelines and never requiring additional budget (for clearance at least) is a key benefit that makes investigating your brand name options even more attractive.

Pharma series

We have put together a short series of publications to support Pharma trademark professionals. 

Our webinar on effective management of trademarks and complementary report on “Trademark Activity in the Pharmaceutical Industry” will give you new insights into the Pharma sector. 

Webinar 

Tiffany Walter, Head of Pharma Trademarks at F. Hoffmann-La Roche AG joins Trademark Specialist, Zac Casstevens in a discussion on effective management of trademarks in the Pharma industry. 

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

Complementary report 

Our 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. 

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Editor’s Note: This post was originally published in January 2019 and has been updated in October 2019.

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