Rospatent to reconsider Grotex's demand to cancel patent on name similar to Trekrezan

The founder of Grotex filed an application to invalidate the legal act with the IP Court in September 2024.

The owner of the Trekrezan individualization means initially filed an objection to Rospatent in November 2023. The disputed Trekresil trademark is protected until March 2028. In its application, Nelovia indicated that the latter does not comply with the norms of the Civil Code of the Russian Federation and the Paris Convention for the Protection of Industrial Property, since it is similar to the point of confusion with the applicant's individualization means patented from 2006 to 2010. The pharmaceutical company also emphasized that it made its trademark recognizable through advertising. "The disputed mark is capable of misleading regarding the actual manufacturer <...>, and the actions of the copyright holder to register the disputed mark are an abuse of rights and unfair competition," Nelovia stated in its objection.

In the document, the pharmaceutical company also referred to a patent dispute with the Usolye-Sibirsky Chemical and Pharmaceutical Plant, which lasted from 2021 to 2023. During this case, the founder of Grotex challenged Rospatent's refusal to consider a complaint about the cancellation of the chemical and pharmaceutical plant's patent for a similar name for the drug Trecrezolid. The court ordered the service to reconsider Nelovia's objection, and the Supreme Court of the Russian Federation upheld this decision. The patent for the name Trecrezolid is currently still held by the plant.

Rospatent refused to satisfy Nelovia's request to suspend legal protection of the Trekresil trademark in June 2024. At that time, the regulator cited the low degree of similarity and the lack of association with each other in civil circulation. In addition, Rospatent referred to the conclusion of the Sociological Expertise Laboratory, cited by the Konstanta-Ya company. The thematic study demonstrated that the Trekresil trademark does not mislead consumers, since the overwhelming majority of respondents assumed that Trekresil and Trekrezan are produced by different manufacturers.

Neloviya reported that during the consideration of the dispute in the SIP, “questions were also raised about the falsification of evidence by a third party – OOO Konstanta-Ya.”

The drug Trekrezan (oxyethylammonium methylphenoxyacetate) is used to boost immunity and prevent colds. Since the 90s, it was produced by the Usolye-Sibirsky Chemical and Pharmaceutical Plant, but in 2020, Nelovia received the rights to the trademark, which began producing the drug under this name at the Solopharm site in St. Petersburg. Attempts by the Usolye-Sibirsky Chemical and Pharmaceutical Plant to challenge the Nelovia trademark were unsuccessful.