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Jill Headford

Posted 30 November 2015
by Jill Headford

Genericide – how to kill your brand

The EpiPen is a device shaped like a pen that administers life saving hormones to victims of severe allergic reactions. The EpiPen brand is now so well known that it is at risk of becoming so commonplace that it is synonymous with the object itself, like hoover or aspirin.

The popularity of EpiPen has allowed Mylan, the drug company which owns the device to increase prices dramatically, creating a gap in the market for competing products at a lower price that are soon to go on sale.

Mylan will rely on its strong brand to distinguish its own product as the authentic original.  It will use its registered trade mark to prevent products being offered under similar names to EpiPen. Trade marks can be challenged and held invalid on various grounds, one of which is lack of distinctiveness. Unfortunately, the EpiPen name is not particularly distinctive, consisting of the first part of the drug name “epinephrine” and the shape of the object. Such marks are easier to challenge compared to a name with no obvious link to the features of the product. This may make it possible for anyone accused of infringing the Mylan trade mark to defend themselves by challenging it.

Mylan are a victim of their own success, with their marketing success threatening to undermine the brand itself. Had Mylan chosen a brand name that was more distinctive, without elements derived from the shape or function of the product itself they would be in a much stronger position but would they have sold as many?

Mylan’s dilemma highlights the tension for those involved in branding between choosing a name that appeals to consumers and one they can be confident in retaining the rights to. Giving a product a wacky name that is a strong trade mark in legal terms but unlikely to resonate with consumers is relatively easy. It’s also easy to think of a descriptive name but that would be incapable of registration as a trade mark. Finding one that works on both fronts is much more difficult and requires careful analysis.

Most new businesses would welcome being in a position where their product is so successful it risks becoming generic but those already in that position may regret not thinking their trade mark strategy through.

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About the author

Jill Headford

Jill Headford

Partner and Solicitor

A partner in the firm since 1994 and an experienced Court and Tribunal advocate, Jill specialises in resolving disputes and is a member of the Property Litigation Association