Distinctive + generic = pharma brand

From European Patent Attorney Ian Hartwell comes this link to a feature in The Times on Saturday. It's an article by Science Editor Mark Henderson entitled "How drug companies try to get inside your head" and it's all about -- surprise, surprise -- the branding of pharma products.

Right: Oseltamivir poses for a friendly photo

The article rightly points out that terms such as methylphenidate, sildenafil, fluoxetine, oseltamivir and trastuzumab will be unknown to the vast number of consumers of pharmaceutical products whereas the brand names Ritalin, Viagra, Prozac, Tamiflu and Herceptin are pretty well household names (in some households, anyway). The gap between the generic term and the brand name is so vast that consumers inevitably genericise the products by referring to them only by their brand names and this article records that a group of American doctors has adduced evidence that the media is complicit in this exercise too. An analysis of US health news reporting led by Michael Hochman, of Harvard Medical School, has found that two thirds of articles described drugs mainly by their brand name rather than their 'real' name. According to Mark Henderson, while British newspapers were not studied, they refer heavily to brands.: a press database search has revealed a total of 1,174 references to Herceptin since 2003, compared with just 44 references to its generic name, trastuzumab.

According to Hochman, such reporting plays into the drug companies' hands, to the ultimate detriment of health funders and patients:

"It creates an impression that the brand is the medicine and that alternatives are inferior. This is a particular problem once drugs go out of patent and generic versions become available for a fraction of the price".

It seems to the IPKat that, if a trade mark is used generically, the risk of genericisation is that the trade mark will cease to distinguish the goods in the eyes of the relevant consumer. But from here onwards the matter becomes less clear. Terms like Herceptin or Viagra may be generic in the eyes of the average man in the street, but within the pharmaceutical products market they will still serve as trade marks in the eyes of wholesalers and retailers, not to mention the medical professions. The European Court of Justice has indicated in the Bostongurka case that a registered trade mark still fulfils its "essential function" if it enables "intermediaries" to distinguish goods, even if the ultimate consumer just sees it as a generic term. Bostongurka involved pickled cucumbers, not pharmaceutical products, though the one-size-fits-all nature of trade mark law applies equally to both. In Bostongurka the Court said:

"23 If the function of the trade mark as an indication of origin is of primary importance to the consumer or end user, it is also relevant to intermediaries who deal with the product commercially. As with consumers or end users, it will tend to influence their conduct in the market.

24 In general, the perception of consumers or end users will play a decisive role. The whole aim of the commercialisation process is the purchase of the product by those persons and the role of the intermediary consists as much in detecting and anticipating the demand for that product as in increasing or directing it.

25 Accordingly, the relevant classes of persons comprise principally consumers and end users. However, depending on the features of the product market concerned, the influence of intermediaries on decisions to purchase, and thus their perception of the trade mark, must also be taken into consideration".

The bottom line, in commercial terms, is that the trade mark covering the brand name can remain registered, thus preventing use by competitors of the brand owner, even though for the lay public the trade mark is no more than a generic term and will be used as such.

If doctors and academics use generic names where possible, to avoid favouring one product over another, Hochman suggests that the media should try to follow suit. But, as Henderson recognises, this is unrealistic: journalists use brand names simply because they are "the currency that the public understands"and stories about overprescription of Ritalin or side effects of Prozac are easily grasped.

Left: without his Ritalin to restrain him, Tiddles was literally jumping out of the window

He concludes that the real culprits are not the media but the companies that devise overcomplicated generic names which are unsuitable for lay use, as well as the regulators that allow them.

The IPKat agrees that generic terms and international non-proprietary names are generally not fit for much more than making facetious anagrams -- but those names often carry descriptive connotations for the industry that can be helpful. There's probably an ingenious solution to this problem out there somewhere: can any readers suggest it? Merpel says, how about a special type of trade mark that can't be renewed and becomes officially generic after a fixed period once the patent and any supplementary protection certificate have expired, thus giving strong initial protection but then allowing more effective competition?