Online | Perfecting Pharmaceutical Trade Mark Protection: Pinnacles and Pitfalls
10 February 2021, 6:00 pm–7:30 pm
UCL Institute of Brand & Innovation Law (IBIL) Annual Brand Seminar
UCL Laws Events
About this event
The start of a new year is often marked by the compilation of annual lists. When it comes to 'top trade mark filers', then we have come to expect the names of well-known pharmaceutical companies featuring high up in the rankings. It is perhaps not surprising that the number of current pharmaceutical trade marks on the UK or EU Registers far exceeds the number of medicaments which are actually authorised for use.
The sheer volume of Class 5 registrations is testament to significant role that brand protection plays in pharma corporate strategy. Most of us are also familiar with the way in which a successful mark, such as NUROFEN, LEMSIP or VIAGRA, serves to sustain a price premium, even though patent protection has expired. The sector has also embraced non-traditional trade marks, seeking registration for product shapes, colours, get-up and the like.
Despite the pharmaceutical sector being such a significant user and beneficiary of trade mark registration systems, it faces specific challenges which others do not. These arise from the nature of the products, the market in which it operates, and the regulatory framework which runs in parallel with the usual trade mark rules. There is additional complexity in each step in the process, from clearing a name for use, securing a trade mark registration, maintaining its validity and finally, enforcing these rights. Who, for example, is the ‘average consumer’ of a prescribed drug? A prescribing doctor? A dispensing chemist? An end user? Or all three? IBIL has brought together a distinguishing panel to discuss how this potentially treacherous path may be navigated successfully.
- Joëlle Sanit-Hugot, Principal Counsel, Sanofi Global IP Department and PTMG Committee Member
- Alexios Skarlatos, European Medicines Agency
- David Lossignol, Global Head Pharma Legal Brand Protection, Novartis Pharma AG and recent past-President of INTA
- Gordon Humphreys, Chair of the First Board of Appeal, EUIPO
- Ashton Chantrielle, Barrister, 8 New Square, Junior IP Barrister of the Year at the 2020 Managing IP Awards.
- About the Speakers and Chair
Joëlle Sanit-Hugot currently manages a Team at Sanofi and supports the Vaccines Global Business Unit. She holds a Master II degree in Industrial Property Law from University Panthéon-Assas PARIS II, and is qualified to act before both the French Intellectual Property Office and EUIPO. Joëlle has practiced intellectual property law for more than 25 years, and has always worked in the pharmaceutical sector. At Sanofi, she is responsible for all aspects of management of a worldwide trade mark portfolio, including trade mark development, trade mark prosecution and litigation. Joëlle is a Member of the Pharmaceutical Trade Marks Group (PTMG) Management Committee and of the European Federation of Pharmaceutical Industries and Associations (EFPIA) Trademark sub-group. At EFPIA she has been more particularly involved in the topics relating to EU guidelines on invented names issued by Regulatory Authorities.
Alexios Skarlatos has been Head of the Product Information Quality section (now called Labeling Office) within the Committees and Quality Assurance Department of the Human Medicines Division at the European Medicines Agency (EMA) since 2009. He is responsible for all labelling aspects of centrally authorised products. Along with naming issues, this includes review of product information, packaging materials (mock-ups & specimens) and coordination of translations. He is Chair of the Name Review Group (NRG) and Chair of the Quality Review of Documents (QRD) group. Before joining the EMA in 2001, Alexios worked first for the Greek Ministry of Interior Affairs and then moved to the Translation Centre for the Bodies of the EU, in Luxembourg, to work as a legal linguistic expert. Alexios holds an undergraduate Law degree from the Democretian University of Thrace in Greece and Masters degree in European Judicial Studies from the European Institute of Public Administration in Luxembourg.
David Lossignol is the Global Head of Pharma Legal Brand Protection at Novartis Pharma AG in Basel, Switzerland, heading up a team which manages IP matters for Novartis worldwide. He joined Novartis from Sandoz International GmbH, where he was Global Head of Trademarks, and has worked in the healthcare sector for all of his career. David was the President of the International Trademark Association (INTA) in 2019. David obtained law degrees at Nice Sophia-Antipolis University in France, where he has also lectured on IP law, and holds diplomas from Oxford Brookes University, UK and from CEIPI in Strasbourg, France.
Gordon Humphreys is currently Chairperson of the First Board of Appeal at EUIPO, having chaired the Fifth Board of Appeal between 2014 and 2019. He joined EUIPO's Legal Department in 1997, was appointed Head of the Register Service in 2002, and became a member of the EUIPO Boards of Appeal in 2005. He is also an accredited mediator with the Chartered Institute of Arbitrators and is a member of the EUIPO Boards of Appeal Mediation Service since 2011. Prior to working at EUIPO, Gordon was in private practice, having qualified both as a barrister (England and Wales) and avocat (Brussels bar). He was also a member of the CIArb Sub-Committee on Revision of Mediation Rules between 2016 and 2018. Gordon was educated at the universities of Buckingham (LL.B), Cardiff (LL.M), Liège (masters in economic law) and Alicante (specialist en derecho de la Unión Europea). He speaks regularly on trade mark, design and ADR matters, and has recently co-edited Mediation: Creating Value in International Intellectual Property Disputes, Wolters Kluwer (2018) and was a contributing author in Hasselblatt, Community Design Regulation: Article-by-Article Commentary, (Beck 2/e, 2018).
About the chair
Ashton Chantrielle is a leading junior who practices in all areas of IP. Ashton specialises in all areas of intellectual property law, such as, copyright, trade marks, passing off, registered and unregistered designs, patents as well as related areas such as contract law and breach of confidence. Ashton has also acted in a number of cases that involve aspects of competition law and has also been involved in a number of arbitrations. Ashton has considerable experience in the Intellectual Property Enterprise Court and appears in the High Court. She also regularly acts for clients at hearings and for appeals in the IPO and the EUIPO.