Kim & Chang successfully represented Gilead Sciences, a global biopharmaceutical company based in the United States, in proceedings seeking to invalidate trademark registrations for generic drugs that imitated Gilead’s trademark for its chronic hepatitis B treatment, “VEMLIDY.”
VEMLIDY is Gilead’s chronic hepatitis B treatment based on the active ingredient tenofovir alafenamide. Since its launch in the United States in 2016 and in Korea in 2017, VEMLIDY has become a leading product in the hepatitis B treatment market. “VEMLIDY” is a coined trademark independently created by Gilead, rather than a mark derived from an ingredient name or medical term, giving it a high degree of originality. Nevertheless, three Korean pharmaceutical companies registered trademarks sharing the “VEMLI” element, namely “VEMLIA,” “VEMLIVER,” and “VEMLINO,” and launched generic drugs under these marks.
Gilead sought to invalidate the registrations on the grounds that the marks were similar to its prior-used and prior-registered VEMLIDY trademark and had been filed in bad faith with the intent to take unfair advantage of the reputation of VEMLIDY. The Intellectual Property Trial and Appeal Board (IPTAB) initially dismissed the petitions, finding that the marks were not similar. The IP High Court, however, overturned all five decisions of the IPTAB, and the Supreme Court subsequently dismissed the appeals without reviewing the merits, making the IP High Court’s decisions final.
In the proceedings, the defendants argued that the “VEM” element common to VEMLIDY and the generic marks was an abbreviation for “Vaccine Escape Mutant,” a medical term, and therefore lacked or had only weak distinctiveness because it merely described the efficacy or purpose of pharmaceutical products. They also argued that, because the products were prescription drugs, the likelihood of confusion should be assessed primarily from the perspective of healthcare professionals such as doctors and pharmacists, and that there was therefore no likelihood of confusion.
Our firm successfully rebutted these arguments by presenting the following legal and factual evidence.
First, we emphasized that the relevant consumers for assessing similarity between pharmaceutical trademarks should include not only healthcare professionals, such as doctors and pharmacists, but also general consumers as the ultimate users of the products. We demonstrated that the designated goods included over-the-counter drugs and that, even in the case of prescription drugs, patients and their family members are frequently exposed to drug trademarks through prescriptions, medication instructions, and online communities.
Second, we demonstrated that “VEM” would not be understood by consumers as an indication of the efficacy or purpose of pharmaceutical products. In a survey of 1,000 members of the general public and 600 doctors and pharmacists, 97.0% and 95.2%, respectively, responded that they did not know the meaning of “VEM.” We also analyzed search results and more than 40 academic papers submitted by the defendants and demonstrated that “VEM” was not a standard or commonly used medical abbreviation.
Third, we presented the results of a consumer perception survey conducted in accordance with the trademark law principle of assessing marks through successive, rather than side-by-side, observation. The survey showed that a substantial majority of respondents, including healthcare professionals, perceived the marks as similar and found a likelihood of confusion.
Fourth, we strengthened the case for likelihood of confusion in the marketplace by presenting examples from prescription systems in which original and generic drug trademarks sharing the same initial element appear together, as well as overseas medical literature showing that the use of identical prefixes can increase the risk of prescribing errors.
The IP High Court accepted all of our arguments and held that the challenged trademarks were similar to VEMLIDY and had been filed with an unfair purpose, rendering their registrations invalid. In particular, the court held that the relevant consumers for assessing the similarity of pharmaceutical trademarks include not only healthcare professionals but also general consumers, and accordingly took into account the perceptions of general consumers as well as those of professionals. The outcome was supported not only by the legal arguments presented but also by an evidence-based approach demonstrating consumers’ actual perceptions.
In this way, our firm combines a deep understanding of the industry structures and market realities in which our clients operate with sophisticated legal reasoning to achieve the best possible outcomes. This decision sends a clear message that the distinctive identity of an original pharmaceutical brand can receive robust protection, and that the adoption of a mark evoking an established prior brand cannot be justified merely on the grounds that it reflects naming conventions commonly used in the generic industry.
