Publication Date: 2003-08-06
This practice notice is intended to provide guidance on current Trademarks Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation the legislation must be followed.
The goods "pharmaceutical preparations" are not considered sufficiently specific to meet the requirements of paragraph 30(a) of the Trade-marks Act which requires that an application for the registration of a trademark contain a statement in ordinary commercial terms of the specific goods or services with which the mark has been used or is proposed to be used.
The fundamental principles for determining the acceptability of goods and services apply equally to pharmaceuticals, and are: the ability (a) to assess whether paragraph 12(1)(b) of the Trade-marks Act applies; (b) to assess confusion with another mark; and (c) to assess whether accepting the goods/services as described will grant the applicant an unreasonably wide ambit of protection.
Pursuant to these principles, the Trademarks Office, for the purposes of paragraph 30(a), requires "pharmaceutical preparations" to be specified in greater detail by either (a) naming the disease, or (b) specifying the disease group or type of disease, disorder or condition to be treated, or (c) by indicating the specific type of medication.
Unacceptable statements
By way of example, the following statements of goods are not considered acceptable since each statement encompasses an array of diseases which exhibit disparate symptoms treatable by a wide variety of types of medications:
- pharmaceutical preparations for the treatment of infectious diseases;
- pharmaceutical preparations for the treatment of viral diseases;
- pharmaceuticals for the treatment of inflammatory diseases;
- pharmaceuticals for the treatment of psychiatric diseases/disorders;
- pharmaceutical preparations for the treatment of neurological diseases/disorders;
- pharmaceutical preparations for the treatment of the central nervous system;
- pharmaceutical preparations for the treatment of the immune system;
- pharmaceutical preparations for the treatment of the nervous system;
- pharmaceutical preparations for use in dermatology;
- pharmaceutical preparations for the treatment of the genitourinary system;
Acceptable - Naming the specific disease, disorder or condition
In general, naming the specific disease is acceptable, for example:
- pharmaceutical preparations for the treatment of viral diseases, namely herpes, hepatitis, Acquired Immune Deficiency Syndrome (AIDS);
- pharmaceutical preparations for the treatment of neurological diseases, namely, Alzheimer's, Huntington's Disease, cerebral palsy;
- pharmaceutical preparations for the treatment of the central nervous system, namely encephalitis, epilepsy, Alzheimer's, cerebral palsy, Parkinson's disease;
- pharmaceutical preparations for the treatment of psychiatric diseases, namely schizophrenia;
- pharmaceutical preparations for use in oncology;
- pharmaceutical preparations for the treatment of cancer;
- pharmaceutical preparations for the treatment of varicose veins;
- pharmaceutical preparations for the treatment of carpal tunnel syndrome;
- pharmaceutical preparations for the treatment of headaches;
Acceptable statements - In some instances, naming groups or types of diseases, disorders or conditions
In addition, there are some situations where types of diseases or disorders are considered acceptable; where they encompass a group of diseases/disorders which (a) exhibit similar symptoms and require similar pharmaceutical treatment, and/or (b) restrict them selves to a particular area of the body such that one could appropriately assess for descriptiveness, confusion and ambit of protection (the three fundamental principals set out above for determining acceptability of goods and services).
For example, the following statements of goods are considered acceptable:
- pharmaceutical preparations for the treatment of infectious diseases, namely respiratory infections, eye infections;
- pharmaceutical preparations for the treatment of inflammatory diseases, namely inflammatory bowel diseases, inflammatory connective tissue diseases;
- pharmaceutical preparations for the treatment of psychiatric diseases, namely mood disorders, anxiety disorders, cognitive disorders;
- pharmaceutical preparations for the treatment of neurological disorders, namely, brain injury, spinal cord injury, seizure disorders;
- pharmaceutical preparations for the treatment of the central nervous system, namely, central nervous system infections, brain diseases, central nervous system movement disorders, ocular motility disorders, spinal cord diseases;
- pharmaceutical preparations for the treatment of immunologic diseases, namely, autoimmune diseases, immunologic deficiency syndromes;
- pharmaceutical preparations for use in dermatology, namely, dermatitis, skin pigmentation diseases, sexually transmitted diseases;
- pharmaceutical preparations for the treatment of genitourinary diseases, namely urological diseases, infertility, sexually transmitted diseases, inflammatory pelvic diseases;
- pharmaceutical preparations for the treatment of the musculo-skeletal system, namely connective tissue diseases, bone diseases, spinal diseases, back pain, fractures, sprains, cartilage injuries;
- pharmaceutical preparations for use in ophthalmology;
- pharmaceutical preparations for the treatment of dental and oral diseases;
- pharmaceutical preparations for use in gastroenterology;
- pharmaceutical preparations for the treatment of the respiratory system;
- pharmaceutical preparations for use in ocular disorders;
- pharmaceutical preparations for the treatment of cardiovascular diseases;
Acceptable statements - Naming the type of medication
In general, naming the specific type of medication is acceptable, where such medication is designed to combat particular symptoms, notwithstanding the fact that its use may cut across a number of diseases.
For example, the following are acceptable:
- pharmaceutical preparations, namely, acne medication, allergy medication, antacids, anthelmintics, antiarrhythmics, antibiotic creams and ointments, antibiotics, anticoagulants, anticonvulsants, antidepressants, antiemetics, antiflatulants, antihistamines, antihypertensives anti-infectives, anti-inflammatories, antiparasites, antivirals, burn relief medication, calcium channel blockers, central nervous system depressants, central nervous system stimulants, cough treatment medication, diarrhea medication, fungal medications, gastro-intestinal pharmaceutical preparations, glaucoma agents, hydrocortisone, hypnotic agents, sedatives, etc.
Note: In light of the constant progress in medical research and the rapidly growing pharmaceutical trade, each application must be examined on its own merits to determine whether in the present medical circumstances, a disease, disorder, condition, or group of diseases, or type of medication, will be considered sufficiently specific to satisfy the requirements of paragraph 30(a) of the Trade-marks Act.