Pharmaceuticals and generics: when the trademark line is crossed

Could G. Gam announce in specialized magazines the oncoming commercialization of the Paroxetine G. Gam as the Deroxat generic?
No, said the Paris Court of Appeals on May 3rd, 2006: such an announcement constitutes an infringement of Beecham’s trademark rights.


The Court considered that it was not comparative advertising since G. Gam only mentioned the Deroxat whereas “ under French law “ a comparative advertising objectively compares one or more essential, pertinent, verifiable and representative characteristics of the goods or services, one of which may be the price (Consumer Code, Art. L.121-8-3).
The Court goes even further by considering that, as a Generic is by legal definition, identical to the Speciality of reference, no objective comparison can be made. The decision seems to exclude any possibility of comparative advertising between Generics and the corresponding Speciality. In its recommendations, the French Health Products Safety Agency contrary allowed such advertisement and, particularly, comparisons between the price of the products or even the cost of treatments.
Furthermore, the use of Deroxat was not a necessary reference to state the intended purpose of the Generic.
There were indeed other means to inform the professionals targeted by the advertisement about the therapeutic purpose of Paroxetine G. Gam:  Since 2002, practitioners undertook to indicate the INN (International Nonproprietary Names) on their prescriptions and chemists can replace the Speciality by the Generic;

Given the obligation for chemists to update their professional knowledge, there was no need for G. Gam to mention the Deroxat trademark. This decision may appear severe and in contradiction with the general policy to promote Generics. It is, in our view, well-grounded as the use of someone’ trademark is a legal exception and exceptions strictly apply.

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