Cleveland Scott York’s top tips on how to trade mark a medical device

Our top tips for effectively protecting marks in the medical devices sector split into recommendations which apply generally in relation to all industries, and those which are sector-specific.

Generally, when looking to adopt a new trade mark, you should

A) Conduct an initial search

Conduct trade mark searches, in all markets of interest, before using or seeking to register the trade mark.  This searching should cover the Trade Marks Register and also, ideally, trade marks in use in the sector concerned.

B) Evaluate the trade mark

Have an evaluation run on whether the term is likely to be objectionable in another way, for example, because a term might be considered offensive in a particular country.

C) Register your trade mark carefully

Consider carefully what should be registered, bearing in mind that descriptive trade marks and trade marks which consist exclusively of a shape or another characteristic, which results from the nature of the goods themselves, which is necessary to obtain a technical result, or which gives substantial value to the goods are difficult, if not impossible to register.

D) File for a trade mark ASAP

File applications for protection of the trade marks as soon as possible, bearing in mind that a filing strategy which works well in one territory may not work so well in another;  any filing programme should be sufficiently flexible to get the most out of the trade mark registration system in each country.

Specific considerations for the medical devices sector are:

1)    Bear in mind descriptive trade marks  

Many brands in use in the sector are very descriptive. This can cause problems because if the name in question is really the only practical name for the device concerned, enforceable protection is unlikely to be achievable.  Consequently, when developing new medical products, developers should have in mind a branding to use for the product as well as a general product descriptor, so that marketing effort can be put behind the brand, rather than promoting a product descriptor which could well be used by everyone in the same sector.  For example, if you were the first person to produce a laryngeal mask, it might be tempting to try and protect that designation as a trade mark, but even if this is achievable, the registration isn’t likely to last very long, when other suppliers of medical devices pile into this market and start using the term, because it is the only practical description of the item in question.

2)    Acronyms/ Abbreviations should be avoided

As well as the medical devices sector showing a preference for descriptive terms, acronyms which are abbreviations of descriptive terms are also popular.  These are also unlikely to be acceptable for registration if they are in general use, but if the acronym is very newly developed, the authorities may allow registration of the acronym, and without realising the term is descriptive.  Should you try to enforce registration against third parties, though, it is pretty unlikely you will be successful, because trade mark registrations are open to invalidation throughout their life, if it is found that the term is descriptive.

3)  Issues with acknowledging individuals

Many medical devices are developed by or in close collaboration with individual surgeons/researchers, and they will sometimes want this fact acknowledged through the trade mark which is used on the product.  This can create problems for a number of reasons – firstly, the company commercialising the invention, unless it is under the sole control of that surgeon/researcher, may not want the new product associated so closely with the surgeon/researcher.  Secondly, disputes over ownership could arise, should the surgeon/researcher no longer be involved in supplying services to the company commercialising the medical device.  Overall, we consider this situation best avoided, but if it is something that has to be contemplated, a commercial contract needs to be put in place, covering the entitlements of both parties.

Don’t hesitate to contact our medical devices team if you have any questions on how best to register a trade mark in the medical sector.

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Posted on: 25th March 2019