Since the activity of the pharmaceutical industry is a regulated activity, in the sense that medicaments require governmental authorisation in order to be commercialised, registering the trade mark with the Trademark Office – as intellectual property right – is not sufficient to guarantee its use in the pharmaceutical product, because the name of the medicament must be accepted by a health authority at the time of issuance of the marketing and sales authorisation.
The criteria adopted by the health authority for approving the medicament's name is different from that of the Trademark Office. This difference exists in all legal systems of comparative law.
From the viewpoint of the trade mark as intellectual property right, and in terms of likelihood of confusion within trade marks of pharmaceutical products, the Argentine law does not contain specific rules related to the risk of confusion in the field of medicaments.
The most recent doctrine understands that each particular case should be analysed separately, in order to determine whether the common criteria – or either stricter or milder criteria – should be applied.
The health authority shall basically consider the risk entailed for the health, because in the event of potential likelihood of confusion and medication error, the element of trade mark or name of the product plays a significant role and affects physicians, pharmacists, and consumers.
In Argentina, in 1982, The Supreme Court of Justice, in its ruling "el Monaguillo SA v Province of Buenos Aires", distinguished the intellectual property right as guaranteed by the constitution, from its regulation and justified the fact than even when the trade mark was registered the regulatory authority could prohibit its use, in virtue of the existing double regulation. It emphasised, however, that the regulatory authority must apply the criteria in a reasonable manner.
Daniel R Zuccherino |
Obligado & Cia
Paraguay 610, 17th Floor
C1057AAH, Buenos Aires, Argentina
Tel: +54 11 4114 1100
Fax: +54 11 4311 5675
