Baker & McKenzie Successfully Represents PIK-Farma in Notable IP Case

 

Moscow, 4 May 2012 – Baker & McKenzie has successfully defended the interests of the PIK-Farma Group in a court case dealing with the cancellation of Rospatent’s registration of the trademark “Carniton” due to its confusing similarity to the international nonproprietary name (INN) of the active ingredient carnitine. This means that a judicial precedent has been set in Russia which will help pharmaceutical producers protect themselves from players registering trademarks in circumvention of generally accepted international requirements.

On 28 February 2012, the Presidium of the Supreme Arbitrazh Court (SAC) overturned the decisions by arbitrazh courts in all three instances and cancelled Rospatent’s decision on the “Carniton” trademark, while fully satisfying the demands of the PIK-Farma Group and putting an end to two years of litigation with the trademark’s owner and with Rospatent.

The verbal designation “Carniton” was registered in the State Register of Trademarks on 11 March 2008. Thereafter, a dietary supplement started to be issued under that name containing L-carnitine L-tartrate, which was not a medication. Yet a pharmaceutical substance under the name “carnitine” was registered by the World Health Organization (WHO) as an INN in 1977. The WTO’s rules forbid registering as trademarks both the INNs themselves, which are public property, and designations similar to them. Rospatent did not accept the objections of the PIK-Farma Group against granting legal protection to the “Carniton” trademark; a court proceeding was then launched.

“The resolution of the Presidium of SAC is final, and in case the objection of the PIK-Farma Group is given a fresh consideration, Rospatent will be compelled to recognize that the registration of a designation confusingly similar to an INN contravenes public order, as set forth by the WHO,” commented Vladimir Schitikov, a lawyer with Baker & McKenzie’s Moscow office.

PIK-Farma is one of the first innovative Russian pharmaceutical companies. It contains subdivisions devoted to development, registration, production, promotion and sale of medications. As of today, the company has a portfolio of 14 medications, including metabolic, cardiovascular and neurotropic drugs. More than 10 medications from various pharmacotherapeutic groups are at various stages of development.

About Baker & McKenzie

Founded in 1949, Baker & McKenzie advises many of the world’s most dynamic and successful business organizations through more than 3,800 locally qualified lawyers and over 5,800 professional staff in 70 offices in 42 countries. Baker & McKenzie is known for having a deep understanding of the language and culture of business, an uncompromising commitment to excellence, and world-class fluency in its client service. Baker & McKenzie’s global revenues for the fiscal year ended 30 June 2011 were USD 2.27 billion. Eduardo Leite is Chairman of the Firm’s Executive Committee.

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