"Dimexide" No Longer a Trademark for Medicinal Gels: IP Court Finds No Distinctive Character
The Intellectual Property Court has revoked the legal protection of the designation "Dimexide" in respect of medicinal gels. Case No. SIP‑1050/2025 has become an illustrative example of how widespread use of a designation by different manufacturers can lead to the loss of its distinctive character.
Genericide is the process by which a trademark turns into a designation that consumers begin to perceive not as an indication of a specific producer, but as the name of the type of product itself.
What the Law Says
The basic rule is paragraph 1 of Article 1483 of the Civil Code of the Russian Federation: registration is not permitted for designations that lack distinctive character, as well as for designations that have become commonly used to denote goods of a certain kind.
The current Trademark Registration Rules, approved by Order No. 482 of the Ministry of Economic Development of Russia dated 20 July 2015 (as currently amended), also take into account the loss of distinctive character by a designation due to its widespread and long‑term use by different manufacturers.
Important distinction:
- If the designation was already generic on the filing date — the issue is resolved under the requirements of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation.
- If the mark was protectable at registration but became generic later — sub‑paragraph 6 of paragraph 1 of Article 1514 of the Civil Code of the Russian Federation applies: legal protection may be terminated early due to the designation becoming the common name for the goods.
What Happened with "Dimexide"
In 2022, Biofarmax LLC registered "Dimexide" as a trademark, including for medicinal gels for external use. Tatkhimfarmpreparaty PJSC challenged the protection, pointing out that this designation had been used by many manufacturers long before registration.
According to the data submitted by the applicant, between 2015 and 2021 alone, 12 manufacturers registered 2,451 batches of the medicinal product under the name "Dimexide". Rospatent did not uphold the opposition, noting inter alia that a significant part of the evidence related to solutions and concentrates, whereas the contested mark was registered for gels.
Position of the IP Court:
- The court was not convinced by these arguments. The mere difference between a gel and a solution does not mean that different designations are involved: gel and solution are types of dosage forms, not designations of the goods.
- Therefore, the use of the designation "Dimexide" by various manufacturers in relation to the product in the form of a solution and a concentrate was relevant for assessing whether consumers perceive the word "Dimexide" as an indication of a specific commercial source or as the name of the medicinal product itself.
- The court declared Rospatent's decision invalid in respect of the contested goods, citing non‑compliance with the requirements of paragraph 1 of Article 1483 of the Civil Code of the Russian Federation, and terminated the legal protection of "Dimexide" for the corresponding goods of Class 5 of the Nice Classification.
Why This Matters
- Use of a designation by several companies alone does not prove genericide.
- However, long‑term and large‑scale use by several manufacturers may indicate loss of distinctive character.
- The key question becomes how consumers perceive the designation in relation to the specific goods.
- When assessing such perception, one cannot automatically treat different dosage forms as completely different goods merely because they have different forms of release.
- For the rights holder, this means the risk of losing the monopoly on a designation that the market has effectively turned into the name of the product.
Practical takeaway:
- The popularity of a trademark is not only an asset. If consumers, manufacturers, and the market as a whole begin to use it as a generic name for the product, the rights holder risks facing genericide.
- Therefore, it is important to control the use of the designation not only by competitors, but also by one's own distributors, in advertising, professional literature, and other sources that shape the market's perception of the designation.
Sources: Civil Code of the Russian Federation, Art. 1483 · Civil Code of the Russian Federation, Art. 1514 · Order of the Ministry of Economic Development of Russia No. 482 · Judgment in Case SIP‑1050/2025.