Over the next decade, digital health devices have the potential to transform our ability to monitor health, diagnose disease, and deliver health care to individuals. Digital health products are often best protected using a combination of intellectual property rights, each covering different aspects of the product. Companies operating in this area must therefore carefully consider their intellectual property strategies. This article provides guidance on how to protect intellectual property in (digital) healthcare products, focusing – initially – on trademarks.
What is a registered trademark?
A trademark is a sign that distinguishes the goods and/or services of one company from those of others. Most trademarks consist of names (such as company, trade, brand, and product/service names) or logos. However, it is also possible to protect other distinctive features of the goods and/or services such as shapes, colors, patterns, sounds and movements. The owner of a validly registered trademark has the right to prevent third parties from using identical or similar signs in trade if certain conditions are met. Ideally, key marks should be protected by registration, as this gives the holder a greater scope of protection. Without such protection, it might not be possible to prevent others from using a conflicting mark.
Brand loyalty can be built through a connection with a name that becomes trusted and registering that name gives the brand owner the right to prevent others from “piggybacking” on their brand loyalty.
How do I get trademark protection?
Protection of a registered trademark can be obtained country by country, for example in Germany by filing an application with the German Patent and Trademark Office (Deutsches Patent- und Markenamt DPMA). It is also possible to obtain EU-wide protection by filing an EU Trademark Application (EUTM) with the European Union Intellectual Property Office (EUIPO). One of the advantages of the EUTM is that it can provide indefinite protection in all 27 EU member states without having to use the mark in all of them. It is also cheaper than a country-by-country deposit in each EU member state. As the UK is no longer a member of the EU, trademark protection must be obtained by filing an application with the UK Intellectual Property Office (UKIPO). If registered protection is required in multiple countries/regions of the world, it may be more cost effective and simpler to file an international application through the World Intellectual Property Organization (WIPO) – sometimes referred to as Madrid filing – rather than filing separately in each country. /Region.
Trademarks are registered for specific goods and/or services divided into classes. Medical equipement would most likely be registered in class 10 (among others “surgical, medical, dental and veterinary apparatus and instruments”), some fall under class 5 (medical preparations and articles), digital health products and services in Class 9 (including “apparatus and instruments for recording, transmission, reproduction or processing of sound, images or data”), Class 41 (“education; training; entertainment; sporting and cultural activities” ) and/or Class 42 (“technological and research and design services relating thereto; industrial analysis and industrial research services; design and development of computer hardware and software”). It is important that the application is correct, because a registration in one area of use will not necessarily protect against use by third parties in other areas. A trademark registration can potentially last indefinitely, provided the trademark is used and the registration is renewed.
Registration of a mark can be challenged or refused on a number of grounds, for example that the mark is not sufficiently distinctive or that there is a conflict of prior rights. It is often possible to overcome any objection with careful argument. It is therefore important to check (preferably before the launch) the availability of a brand in all the markets where the product will be distributed. Otherwise, there is a risk that the trademark will infringe on someone else’s rights and that the trademark owner of the medical device or digital health product will have to rebrand (potentially globally) due to a problem in a country or territory.
What are the considerations when filing trademarks for medical devices or digital health products?
In addition to word marks and logos, digital health companies can seek protection for so-called non-traditional marks such as shape, color, pattern, sound, or motion marks. If, for example, a wearable device has a unique shape or color, consumers may see it as an indication of the product’s origin – a role more commonly associated with logos or words. Non-traditional marks can be powerful rights because they can deter competitors from using similar shapes or colors. Since a trademark registration can potentially last indefinitely, the benefits of obtaining this type of protection for digital health products are obvious. The same is true for (non-digital) medical devices and EUIPO’s registration practice for these can be seen as an indicator of shape marks for digital health products.
However, obtaining non-traditional marks can be difficult. Shape marks, for example, will be challenged if they are purely functional or decorative (rather than an insignia of origin). EUIPO’s registration practice with regard to shape marks for (non-digital) medical devices proves this as the Office has rejected many shape mark applications for inhalers due to lack of character distinctive (see, for example, refused application no. 018363104, a shape mark for an inhaler, filed by Novartis AG). This practice illustrates the difficulty of maintaining trademark protection for medical devices, and the same will be true for digital health products.
Registration of color marks is also often refused for lack of distinctive character. Here again, the practice of registration in the field of medical devices shows the difficulties: the Court, for example, ruled that a color mark filed for a shade of violet for inhalers was not registrable because it lacked character distinctive since, for part of the relevant public, color did not function as an indicator of origin (T-187/19, Glaxo Group Ltd v EUIPO). These cases highlight the challenges companies are likely to face in obtaining and retaining non-traditional brands for their devices.
However, some medical devices as well as some digital health products, including several wearables, have been successfully registered as shape marks. Educating the consumer that certain aspects of the product – such as its shape or color – are indicators of origin can help ensure protection. This will involve a global branding strategy to achieve the necessary level of consumer recognition in all markets, but which will then contribute to brand enforcement.
The field of digital health is booming. Therefore, companies should be aware of the need to monitor potential infringements, track competing products and proactively manage their trademark portfolio, particularly if they operate in multiple jurisdictions.
Companies can also consider protection of registered designs as another, sometimes more appropriate, form of intellectual property protection for the shape of medical devices or digital health products. Design protection has a few advantages over trademark protection: registration is fairly easy, there is a 12-month novelty grace period and a substantial deferment of publication which preserves confidentiality. We will be happy to advise you on the best protection for your products and services.