Protecting pharmaceutical trademarks in China and Taiwan

Date: 21 January 2022

【Volume 70】Intellectual property rights for pharmaceuticals cover various fields like patent, trademark and copyright. To pharmaceutical companies, trademark is key in marketing and advertising of drugs. Obtaining trademark registrations for drugs is therefore of utmost importance for the pharma companies. Yet, in view of the special nature of medicines, the selection of words in a mark and the registration of pharmaceutical trademarks are more difficult than trademarks for general commodities.

In addition, the portfolio of pharmaceutical trademarks usually spans multiple countries or around the globe. Taking Chinese-speaking countries like Taiwan and China as examples, the examination standards of pharmaceutical trademarks are already vastly different in these two countries. One drug trademark application may be registered in Taiwan but the very same mark may be refused in China on absolute grounds. The following article summarizes the common types of pharmaceutical trademarks that are likely to be refused in China and Taiwan, and illustrates the differences between the two countries.

Common grounds for approval or refusal of pharmaceutical trademarks according to China and Taiwan trademark laws

1. Generic names

In terms of Paragraph 1 (1), Article 11 of the Trademark Law of the People's Republic of China (“China Trademark Law”), and Paragraph 1 (2), Article 29 of the Taiwan Trademark Act, generic names of the goods shall not be registered as trademarks.

Below are the cases of generic names of pharmaceutical trademark applications that were refused or approved:

China Taiwan

Refusal of trademark registration

“布替林”

Reason: “布替林” is the Chinese of the antidepressant “Butriptyline”, which is a generic name.

Approval of trademark registration

“克痢黴素”(Reg. No. 01498750)

Reason: This trademark is the Chinese translation of the brand name drug “Colimycin”.

In China trademark examination practices, the CNIPA has always insisted “generic names of drugs shall not be registered and used as trademarks”, and implements stricter examination standards to trademark applications consisting of generic names.

2. Words referencing to raw materials and functions

According to Paragraph 1 (2), Article 11 of the China Trademark Law, and Paragraph 1 (1), Article 29 of the Taiwan Trademark Act, a sign having direct reference to features of the designated goods such as raw materials and functions, shall not be registered.

Below are the examples of pharmaceutical trademark applications that involve raw materials and functions of drugs:

China Taiwan

Refusal of trademark registration

“克痒舒”, “逍宮留

Reason: 

The first trademark means “suppression and relief of itching”.

Although the second trademark does not directly specify the function of the drug, it is the homophone of a phrase “消宮瘤 (remove uterine fibroids)”. It is likely to mislead the consumers.

Approval of trademark registration

“療黴舒”(Reg. No. 00519410)

Reason: The trademark can be interpreted as “treatment, relief of fungal infection”.

In China trademark examination practices, words or phrases that describe or hint the function of drugs, e.g. “舒 (alleviate/relieve)”, “通 (unblocking)”, “暢 (unimpeded)”, would be considered merely descriptive of the functions and purpose of the goods, and be refused registration.

3. Specify indications and subjects

Under Paragraph 1 (2), Article 11 of the China Trademark Law, and Paragraph 1 (1), Article 29 of the Taiwan Trademark Act, a sign that conveys an immediate idea of features and relevant characteristics of the designated goods shall not be registered.

Below are the examples of pharmaceutical trademark applications that convey indications and subjects of the drugs:

China Taiwan

Refusal of trademark registration

“速康骨痛宝”

婦因潔

Reason: The literal translations of the first and second marks are “speedy, health, bone, pain, precious”, and “women, because, clean” respectively.

 

The trademarks contain organ names, disease names and subjects. It is likely to mislead the consumers.

Approval of trademark registration

“骨痛寧” (Reg. No. 01498750)

(The mark can be directly translated to “bone, pain, and tranquility”.)


”(Reg No. 01113328) (The mark can be interpreted as “women’s bath”)

In China trademark examination practices, when a mark specifies an organ or subject of a pharmaceutical product, it is more likely to be considered as a mark that deceives or misleads the public, and cannot be registered (see Point 5 for further explanations).

4. Devoid of distinctiveness

Paragraph 1 (3), Article 11 of the China Trademark Law, and Paragraph 1 (3), Article 29 of the Taiwan Trademark Act provide that a sign which is devoid of any distinctiveness shall not be registered.

Below are the examples of pharmaceutical trademark applications that convey indications and subjects of the drugs:

China Taiwan

Refusal of trademark registration

分子态

Reason: The mark simply means “molecular state”.

Refusal of trademark registration

“秒殺”

Reason: It is a Chinese slang that means “the products sold out in a flash”.

5. Likely to mislead the consumers

Under Paragraph 1 (7), Article 10 of the China Trademark Law, and Paragraph 1 (8), Article 30 of the Taiwan Trademark Act, a sign that is likely to mislead the public shall not be registered.

Below are the examples of pharmaceutical trademark applications that are likely to mislead the public:

China Taiwan

Refusal of trademark registrationRefusal of trademark registration

“獸藥”

(Designated goods: “medicines for human purposes”)

 

Reason: The literal translation of the mark is “animal medicines”. The mark is likely to mislead the public of the medicine’s target and affect medication safety.

Refusal of trademark registration

“isome大人の減肥科學”

 

Reason: The literal translation of the mark is “isome adult’s weight loss science”. The public are likely to be misled to believe that the applicant’s goods would help to lose weight and change the body appearance.

6. Detrimental to socialist morals or customs, having unhealthy influences, contrary to public policy or to accepted principles of morality

According to Paragraph 1 (8), Article 10 of the China Trademark Law, a sign that is detrimental to socialist morals or customs, or having other unhealthy influences shall not be registered. In Taiwan, a sign that is contrary to public policy or to accepted principles of morality shall not be registered under Paragraph 1 (7), Article 30 of the Taiwan Trademark Act.

Below are the examples of pharmaceutical trademark applications that are contrary to public policy or to accepted principles of morality.

China Taiwan

Refusal of trademark registration

“新冠消毒”

Reason:The mark is directly translated to “COVID-19, disinfection”. The applicant used COVID-19 pandemic as an opportunity to squat the related trademarks, hoping to see illegal gains. Such act is “detrimental to socialist morals or customs, or having other unhealthy influences”.

Approval of trademark registration

“筋疾掰” (Reg. No. 01719473)

Reason: Although the pronunciation of the mark is similar to a particular swear word in Taiwanese, the mark can also be literally interpreted as “eliminate fascial diseases”. The mark therefore can be registered.

Other considerations for pharmaceutical trademarks

China and Taiwan do not have specific regulations or examination guidelines for pharmaceutical trademarks. In Taiwan, the examination of such trademarks shall be based on the Taiwan Trademark Act and relevant examination guidelines.

As for China, even though the trademark examination shall follow the China Trademark Law, China has additionally established the “Provisions on the Administration of Pharmaceutical Directions and Labels”, which prohibit the use of any unregistered trademark or any other pharmaceutical name that was not approved by the Government in pharmaceutical directions and labels. In actual practice, the CNIPA is more stringent in the examination of pharmaceutical trademarks because of medication safety and other considerations. Pharmaceutical companies and trademark applicants shall pay more attention to such regulations.

Wisdom Sugested Strategies

Pharma companies often wish to use words relating to therapeutic effects or raw materials as trademarks of pharmaceuticals, aiming to gain an advantage in marketing activities, and increase consumer awareness and purchase intention. Even if such suggestive marks can create a strong impression on consumers, it would be more difficult to be registered as trademarks.

Therefore, companies must make a prudent choice of words to be trademarked. If trademarks in Chinese are desired, companies shall consider the trademark strategy in both Taiwan and China. Furthermore, we suggest conducting a comprehensive search of trademark availability before filing in order to effectively safeguard your interests in the pharmaceutical market.

 

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