Boehringer loses another ‘Trajenta’ trademark dispute

over its antidiabetic drug 'Trajenta'

Claimed the trademark of Daewoong’s pain reliever ‘Traceta’ invalid but was dismissed by IPTAB

Second defeat after failing to defend their trademark rights against Kwangdong’s ‘Diagenta’

Boehringer Ingelheim once again tasted defeat in a trademark dispute over its DPP-4 inhibitor antidiabetic ‘Trajenta (linagliptin).' In addition to the trademark dispute against Kwangdong Pharmaceutical in 2019, the company recently lost once more in a suit against Daewoong Pharmaceutical.

 

According to the industry on the 13th, the Intellectual Property Trial and Appeal Board dismissed the trademark invalidation trial field by Boehringer Ingelheim against Daewoong Pharmaceutical.

 

Boehringer Ingelheim had filed a trademark invalidation trial against Daewoong Pharmaceutical claiming that Daewoong’s ‘Traceta’ is similar to Trajenta.

 

Traceta is an Acetaminophen and Tramadol combination used to treat acute and chronic pain.

 

The drug was approved in October 2019.

 

In June 2019, four months before gaining approval, the company had filed a trademark application for the trade name Traceta and registered the trademark in October 2019, immediately after the drug approval.

 

On Boehringer Ingelheim’s claim of trademark infringement, Daewoong Pharmaceutical rebutted that the antidiabetic Trajenta and the analgesic Traceta have very different uses, and therefore have little risk of causing misunderstanding or confusion among general consumers.

 

As a result, the IPTAB ruled in favor of Daewoong Pharmaceutical.

 

This was the second trademark dispute defeat for Boehringer Ingelheim in Korea.

 

The company had filed a similar trademark invalidation suit against Kwangdong Pharmaceutical in July 2019 but lost.

 

At the time, Boehringer Ingelheim claimed the trademark of Kwangdong’s ‘Diagenta’ invalid due to their similar name and class of goods.

 

Diagenta is a generic of Trajenta made by Kwangdong Pharmaceutical that was approved in February 2019.

 

24 companies including Kwangdong Pharmaceutical had received approval for their generics by succeeding in invalidating the crystalline form patent of Trajenta at the time, but Boehringer Ingelheim had only requested an invalidation trial against Kwangdong Pharmaceutical.

 

The IPTAB said, “Trajenta is a coined trademark with no special meaning.

 

Diagenta’s name nor appearance is similar to Trajenta and the contrast is clear in concept.

 

Although both names contain ‘genta’, the difference between the first two letters is large, leaving little room for consumers to misunderstand or confuse them.” Trajenta is Boehringer Ingelheim’s DPP-4 inhibitor used to treat diabetes.

 

According to the market research institution UBIST, prescription sales of Trajenta amounted to 64.5 billion won last year.

 

The drug was prescribed 47.2 billion won’s worth by Q3 this year.

 

Trajenta Duo, a Trajenta+metformin combination of Boehringer Ingelheim, sold an accumulated amount of 49.9 billion won by Q3 this year.

 

19 companies including Sinil Pharmaceutical had received generic exclusivity for Trajenta’s generic through a crystalline form invalidation patent and passive trials to confirm the scope of composition patent in 2016.

 

The companies may release their generics after September 2023 when Trajenta’s substance patent and use patent expires.