module 8 - international patent regulations (ipr)

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The given information is compiled from various offline / online sources, towards the sole

purpose of knowledge sharing.

Module 8

International Patent Regulations (IPR)

Trademarks

All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Let’s take a closer look at one of these trademark classes - class 5.

What is International Class 5 All About?

Each class has a short title heading that gives a snapshot of what that class is all about—IC 5’s short title is pharmaceuticals. But, as with anything trademark, there’s more to it than that.

The USPTO has 955 accepted descriptions that fit into IC 5.

The Basics of Trademarks

Trademarks and the concept of trademark protection have been in existence for literally thousands of years dating back to the days of the Roman Empire when blacksmiths would emblazon swords that they had crafted with a distinctive symbol. The trademark was affixed to the finished product to identify the originating craftsman or shop.

Trademarks have come a long way since that time and can now consist of nearly any type of identifying feature that signifies or identifies the person or company that created, sells or markets a particular product or service.

Trademarks can consist of any single or combination of identifying features including but not limited to the following:

Names Words Phrases Logos Symbols Colors Scents Designs Images

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A trademark not only serves to identify the producer or seller of a particular product or service but also serves to differentiate the item from similar products produced by a competitor. Trademarks can be owned by individuals, businesses or any other legal entity and are considered to be Intellectual Property. They also may be sold, leased or licensed to outside parties but also must be “active” to be considered protected.

Trademark protection applies to both registered and unregistered symbols, logos, designs, etc. For instance, if a company has sold a product under a distinctive brand name for a period of time without registering that name with either a national or state trademark office may still be afforded trademark protection for that name and may seek and be awarded damages for any infringement.

The basics of Trademarks registration

However, it is advisable to register a trademark in order to be afforded the highest level of protection and to ensure the owner the ability to recover damages if trademark infringement occurs.

Federal trademark registration is handled through the U. S. Patent and Trademark Office (PTO). States also have a process for trademark registration. In order for a trademark to be registered it must be:

1- Trademark, Service Mark, Collective Mark or Certification Mark (more on these distinctions later)

2- A devise or method adopted or used to distinguish the goods or services from those of others

3- Distinctive, arbitrary or fanciful 4- Not confusingly similar to marks previously or currently in use or registered

Trademark registration can be a lengthy and detailed process and it is advisable to obtain the services of an attorney who specializes in this area of practice.

Trademark Search

A Trademark search needs to be conducted before filing for protection. Trademark search is very important before registering a Trademark as it confirms the presence of any other similar trademark already in existence.

Trademark search can be done in two ways:

One by asking a authorized trademark agent to do the searches and give their opinion and report for the same whether the present trademark name or logo can be used or not,

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Second way is by filling in Form no 54 available from the Trademark Registry office for doing the necessary searches.

This can be done paying a prescribed fee of Rs. 500 for every trademark name to be searched.

Difference between Registered And Unregistered Trademarks

Trademarks in India may be registered or unregistered under the Indian Trademarks Act, 1999 (‘the Act’). Matters pertaining to Indian registered trademarks and the rights which flow from registration under the Act are generally consistent with trademark laws in the United States,

European Union members and other members of the World Intellectual Property Organisation (WIPO).

Benefits of registered Trademarks:

A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered.

What are unregistered trademarks?

Unregistered Marks are defined as marks which are not used in relation to goods or services (that is names, marks or logos used in relation to a business) or marks which otherwise do not qualify for registration may nevertheless be protected by means of passing-off action.

Types of Trademark

A trademark is designated by the following symbols:

• ™ (for an unregistered trade mark, that is, a mark used to promote or brand goods) • â,, (for an unregistered service mark, that is, a mark â,, superscript SM used to

promote or brand services) • ® (for a registered trademark)

A new Trademark regime has been introduced in India since September 15, 2003. The new Trade Marks Act, 1999 has many innovative features:

1. Service Marks:

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Service marks are marks used in service business where actual goods under the mark are not traded. It is a mechanism available to protect marks used in the service industry.

2. Collective Marks:

Marks being used by a group of companies can now be protected by the group collectively.

3. Certification Marks:

Certification marks are used to define standards. The issue of certification marks indicates that the product has gone successfully gone through certain standard of test specified for a particular product.

4. Well-known marks:

Marks, which are deemed to be well known, are defined. Such marks will enjoy greater protection. Persons will not be able to register or use marks, which are imitations of well-known trademarks.

UNCONVENTIONAL TRADEMARKS

Unconventional Trademarks are those which get its recognition for it inherently distinctive feature.

Unconventional Trademarks include the following categories:

Color Trademark- If a particular color has become distinctive feature indicating the goods of a particular trader. For example- Red Wine

Sound Marks- Signs which are perceive by hearing and which is distinguishable by their distinctive and exclusive sound. For example-Musical notes

Shape of goods, packaging-When shape of goods, packaging have some distinctive feature. For example-Ornamental Lamps

Smell trademarks-When smell is distinctive and cannot be mistaken with an associated product. For example-Perfumes

Trademarks Registration procedure in India

A Trademark can be registered by filling in Form No-1 provided by the Trademark registration office. The application has to be filed in the Trademarks registry office in the territory according to the place of business.

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The applicant has to provide details such as proprietor name, place of business and address, first date of use of trademark, the trademark name used or proposed to be used, the court which would have the jurisdiction in case of any infringement, any translation or transliteration of the trademark name (if any), copies of representation of trademark, etc., and other details required in the form.

After filing, the Trademark office shall issue an application number for the Trademark filed for which registration is pending. After receiving the application number, one can use TM next to the Trademark name, for e.g. INTEPAT™. Once the registration is complete one can use r in a circle next to the registered trademark name, for e.g. CADBURY®.

If the trademark is registered then an entry into the register is made including:

Address of principal place of business of the proprietor in India

Particulars of the trade, occupation or business of the proprietor

The scope of the registration i.e. class of the goods or services

The convention application date(if any)

If the mark is collective or certification mark or any other mark

The registration is done with the consent of the proprietor

The appropriate office of the Trademarks registry in relation to the trademark.

Thereafter, a Certificate of Trademark registered is issued in Form no-2.

The whole procedure for registration may take approximately 18 months or more from the date of application.

Need for registering a Trademark

Trademark protection is something that every entrepreneur should be aware of, because trademark registration can play a vital role in the process of establishing a brand name.

Difference between the “TM” and the “R” Symbols

The difference between the two symbols R and TM is whether the trademark has been registered with the federal government. A mark with a TM signifies a mark that hasn’t been registered; the R symbol can only be used with a trademark that has been registered.

Domain Names and Trademarks

Once you register a domain name, others cannot use it as their web address. A domain is a lot like a street address or location on the Internet. However, this does not automatically mean you can register it as a trademark protected by the federal government for your products and

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services. Whether it can also function as a legally protectable brand that adds value to your business depends on what you choose, so choose wisely.

Necessity of Trademark Search

Given the additional costs and effort, it is not surprising that a trademark applicant would want to avoid conducting a conflict or identical search prior to filing an application. However, a search report can help pre-empt potential problems at the trademark application process and reveal invaluable information regarding availability and registrability of a proposed mark. This article briefly explores two types of search, namely pre-file search and watch service, and explains the purpose and key advantages of conducting the search.

Pre-File Search

One of the requirements of a registrable mark is that it must be distinctive. Conducting a pre-file search at the trademark register helps to avoid such objections which can prove costly, and may ease the application process during the substantive examination stage.

A search report also places the applicant in a better position to make informed management decision whether or not to proceed with the filing of a proposed mark. If the search report returns unfavorable results, the information gathered may allow him to make certain amendments to the proposed mark prior to filing with a view to increase the chances of success of obtaining registration.

Watch Service

Besides the benefit of valuable insight from conducting a pre-file search, a trademark search may also be useful post-registration.

Hence, while conducting a trademark search (pre-file or post-registration) is not mandatory, it is clear from the above that the benefits far out-weigh the risks of not conducting one.

Patents

The Indian Patent Act, 1970 The Patent (Amendment) Act, 2005

Process Patent Product Patent

5 years for Food, Drugs, Medicines etc., and 14 years for other inventions

20 years for all inventions

Indian market became undesirable for the MNCs

Reversal of Law in case of violation of their Patent from Plaintiff to Defendant

Focus on Generics and Neglect of New Drug Discovery

To recognize all patents filed after 1/1/2005

Development of expertise in Reverse MNCs to enjoy same IPR in India as they do

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Engineering elsewhere. Shifting focus from Generics to Innovative Drug Discovery

India is a member/signatory to – TRIPS (1995), Paris Convention (1998), Convention on Bio-diversity (1994), Budapest Treaty (2001), Berne Convention, Universal Convention for Copyright (1952) and many others.

India fulfilled the WTO Commitment and our Patent’s (Amendment) Act 2005 has become TRIPS Compliant since 1st Jan 2005. India thus joined the countries having industrialized free market economies.

The trend of patent filing in our country has tremendously increased. Economic Times of Jan 7, 2009 has reported that “a total of 35,218 patent applications were filed, 6040 from domestic and 29,178 from foreign applicants in the last fiscal”.

The new patent regime has led many multinational pharmaceutical companies to look at India as an attractive destination not only for R&D but also for contract manufacturing, conduct of clinical trials, generic drug research and co-marketing alliances.

The focus of the Indian Pharma Companies is also shifting from process improvisation to drug discovery and R&D. Indian companies are setting up their own R&D setups and are also collaborating with the research laboratories like CDRI, IICT etc.

Mergers, acquisitions and alliances have been taking place on an unprecedented scale, most notably with companies in the U.S, Europe and Japan. These transactions provide Indian companies with access to foreign markets and facilitate the process of seeking regulatory approval for new products.

Research and Development India’s pharmaceutical industry has the competitive advantage in improving its market share as prescription drugs worth more than US$ 65 billion are to lose their patents in 2009-10 which shall enable India to become the regional hub in R&D, manufacturing and exporting activities. R&D departments are moving away from reverse-engineering in favor of developing NDDS and discovery research.

FDA ANDA Approvals for Indian Companies

Year Number

2002 21

2003 26

2004 25

2005 52

2006 74

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Assistance from Indian Government Exemption from Excise duty on Anti-AIDS drugs and life saving vaccines

Reduction of customs duty to 5% on 10 Anti-AIDS and 14 Anti-Cancer drugs

Weighted tax deduction of 150% on R&D holding recognition of DSIR

100% Foreign Direct Investment

The New Millennium Indian Technology Leadership Initiative’ (NMITLI) and the ‘Drugs and Pharmaceuticals Research Programme’ (DPRP)

Business Avenues Contract Manufacturing

Contract R&D

Contract Clinical Trials

PATENT ORDINANCE: DRIVING FORCE FOR FUTURE INITIATIVES POST-PATENT ORDINANCE

Sector Post Patent Ordinance Scenario

CRAMS Growth rate of 32% from 2008-2013. Four times more employees than USA and Twelve times more than UK

KPO US $2 billion up to 2010

Medical Textile US $7.5 billion Sixth position among technical textiles

BPO US $4.5 billion by 2008 Employing 2,00,000 people

Medical Devices 575 billion INR market Diagnostic Equipment: 2000 crore INR Surgical Equipment: 1300 crore INR

2007 127

2008 134

Q1 2009 50

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Health Insurance Only 4% of National healthcare cost borne by Insurance

IT US $315 million by 2011

Biotechnology Present Growth rate: 6% Growth rate till 2010: 8%

CRO US $18 billion till 2010

Medical Tourism Low cost advantage Growth rate: 25% and US $2 billion till 2012

Telemedicine 120 Telemedicine centers in India Projected for 650 Telemedicine centers

Nano Technology To exceed US $100 billion by 2020

Food Industry US $70 billion in 2009 to US $150 billion in 2025

http://www.pharmainfo.net/og/pharmindia/indian-pharma-and-new-patent-regime

http://www.pharmainfo.net/og/pharmindia/indian-pharma-and-new-patent-regime

module 8 - international patent regulations (ipr)

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