Do you have permission?

When a company is considering registering a new trademark for a drug, it should search to check earlier trademarks. However, it must also check whether the trademark will be approved by the Danish Medicines Agency and whether it will be possible to market the medicinal preparation under the chosen trademark.

When the Danish Medicines Agency grants a marketing authorisation for a new drug, it assesses: 

• the effect and quality of the preparation; and 
• whether the chosen trademark can be approved.

The name is compared to other drug names that have already been granted marketing authorisation. If existing preparations are found to have an identical or confusingly similar trademark, the agency will reject the new marketing authorisation application.

The Danish Medicines Agency makes its assessment through its own closed system. However, its decision will not be affected by whether a trademark registration already exists or whether the applicant has a stronger right to the trademark than the owner of the identical or confusingly similar trademark which already holds marketing authorisation. Thus, it may be that even if a valid trademark registration has been obtained, the mark cannot be used as another party already holds the marketing authorisation.

The proprietor of the registered trademark may bring enforcement proceedings to stop use of the trademark that prevents him or her from obtaining marketing authorisation (provided that his or her trademark was registered earlier). However, the Danish Medicines Agency will not issue marketing authorisation for a trademark that can be confused with a trademark that it has approved within the past 10 years. In other words, it does not matter whether the latter trademark infringed the former when the marketing authorisation was granted.

To minimise the risk of rejection by the Danish Medicines Agency on the grounds of the chosen name, it is imperative that a company search existing names. If no identical name is found, it should file the marketing authorisation application as quickly as possible and thereby obtain priority over subsequent applications.