Navigating the trade mark landscape in the pharmaceutical and consumer healthcare sectors is uniquely complex, but we’re here to guide you every step of the way. Our team has extensive experience supporting companies across the full spectrum of the industry, from innovative start-ups still in early-stage R&D through to established international market leaders with global brand portfolios.

We understand that pharmaceutical trade marks aren’t just about branding. They’re also integral to patient safety and are closely scrutinised by regulators. That’s why our approach is tailored to the specific challenges and risks faced by companies operating in this sector. From brand name clearance projects to global brand enforcement strategies, whatever stage you're at, we’re here to help your brand thrive.

Strategic Clearance

Trade mark clearance searching is an important aspect of developing any new brand name, but for pharmaceuticals, clearance searches will typically need to be more comprehensive than in other industries. Not only do proposed names need to be available for trade mark registration, but they must also meet the rigorous standards imposed by regulatory bodies such as the Medicines and Healthcare products Regulatory Agency (MHRA) in the UK and the European Medicines Agency (EMA) in the EU.

Our pharma trade mark experts are highly experienced in devising and conducting international trade mark clearance projects spanning many countries, including ‘pharma in use’ searching, where checks are made of relevant databases of pharmaceutical names that are actually in use. We work with clients to identify viable names, taking into account important commercial considerations, reducing the risk of costly rebranding later down the line.

Early, But Not Too Early: Filing Strategies That Work

We know that the road from lab to launch can be long, often spanning many years. Timing trade mark applications correctly is therefore critical. Apply too early, and your registration may become vulnerable to non-use challenges before the product is even on the market. Apply too late, and you risk not being able to use the mark you want. We help clients manage these timing issues and build trade mark portfolios with longevity and enforceability in mind.

Global Enforcement

When it comes to pharmaceuticals, confusion in the market can have serious consequences, both for patients and for brand owners. That’s why we develop comprehensive, international enforcement strategies to protect your trade marks worldwide. From dealing with conflicting trade mark applications to tackling online infringement, we ensure your rights are robustly defended.

Combating Counterfeits

The pharmaceutical industry remains one of the most heavily targeted by counterfeiters. We help companies put proactive measures in place to identify, investigate, and tackle counterfeit goods swiftly and effectively.

Parallel Trade: What It Means for Your Brand

Our experts can also advise on managing parallel imports, a common issue in this sector due to pricing disparities across different territories. Our team can help you assess whether your rights have been infringed and advise on appropriate enforcement action.

Alliance Pharmaceuticals

Alliance Pharmaceuticals is a leading international consumer healthcare business. From its origins in the UK over 20 years ago, Alliance has grown to market its products in over 100 countries worldwide, employing around 285 people based in locations across Europe, North America and the Asia Pacific region.

For more than 20 years we have worked with Alliance to protect and enforce its trade marks, such as MACUSHIELD, KELO-COTE, VAMOUSSE, LYPSYL, ANBESOL and HYDROMOL, in countries all over the world.

Working closely with Alliance’s in-house legal team, our role is diverse and constantly evolving. We hold strategy meetings twice a month, have provided training on intellectual property to brand managers and marketing teams, and partner Rebecca Anderson-Smith spent some time in-house during a secondment. Our long-standing relationship means we are trusted to ease the load of the legal team by working directly with other individuals within the business as needed.

Prior to entry into new markets, we devise international trade mark searching and filing strategies, balancing the desire to obtain the broadest possible protection, against associated risks and any budgetary constraints.

We coordinate the results of searches from attorneys in countries all over the world, cutting through any legal jargon, in order to present clear and honest opinions on the legal position, alongside creative and commercially focused solutions.

We make use of a number of systems for obtaining trade marks, including national trade mark applications and the Madrid Protocol system, always with an eye to the goals of the business for each particular brand and jurisdiction. We never take a ‘one size fits all’ approach.

We also assist Alliance with enforcement of its trade marks all over the world, working with a large network of trusted contacts in other jurisdictions. This is not only through the filing of trade mark oppositions and cancellations, sending letters to potential infringers, and bringing actions before the national courts, but also through international Customs enforcement work.

In every situation, we carefully consider with Alliance what a successful outcome looks like. This will depend on the brand, market and nature of any potential conflict. We regularly negotiate commercial solutions, recognising that the legal enforcement option available is not always the best choice. We always act with a view to achieving their ultimate business goal, protecting their position in the market and the reputation of their brands, which in the pharmaceutical and consumer healthcare field is absolutely vital.

International Protection Strategy 

Our client has been researching and developing innovative new products in the pharmaceutical space but does not yet have regulatory approval. We have devised robust international filing strategies to successfully protect and, importantly, maintain protection for their house mark and product names, navigating the challenges of requirements for genuine use of a trade mark in commerce in many jurisdictions. 

Enforcement of Trade Marks 

We assisted our client with UK trade mark infringement proceedings and connected trade mark oppositions. A key issue on which our expertise was sought was the extent to which there can be genuine use and/or justifiable non-use of a UK trade mark where clinical trials are still underway. 

Clearance Project

Our client requested our assistance in assessing the availability for use and registration of a number of possible trade marks for their veterinary products. We began by conducting identical trade mark searches for six possible candidate names on an international basis. The preferred name was then put forward for more comprehensive searching across key jurisdictions. When issues were identified, we conducted further searches for an alternative name. We also supported the client with trade mark applications in various jurisdictions.