What Happens When Someone Copies And Unlawfully Uses Your Trademark? Remedies In Case Of Infringement And Passing Off

With hard work, money and time, once you reach a stage where your Trademark becomes a known brand and consumers start associating the same only with your business, you will sooner or later come across unscrupulous elements trying to make quick profit by unauthorised use of your trademark for marketing their products, eating into your hard earned reputation and gains.

Indian Trade Marks Law provides legal remedy to protect the rights of bonafide owners of trademarks. Two terms are significant here “infringement” and “passing off”. A Registered user of Trademark can prevent its misuse by initiating infringement action in court of law, whereas in case the Trademark is not Registered but it is a bonafide and honest adoption coupled with usage , legal remedy under Tort of passing off can be sought.

Following civil remedy/reliefs can be sought under infringement / passing off :

permanent and interim injunction,

damages or

account of profits,

delivery of the infringing goods for destruction.

One can also avail remedies under Criminal Law in case of false application of a Trademark and the use of false trade descriptions. The law provides for search and seizure of infringing articles and the offence is punishable with imprisonment and fine .

Trademark protection demands vigilance from businessess and if you believe your Trademark or similar Trademark is being used without your permission, contact an experienced IP Attorney.

For any suggestions/query you can email me at securingip@gmail.com or please drop in your comments

Indian Patent Office Starts Functioning As International Search & Examining Authority

On 15^th October 2013, Indian Patent Office announced its functioning as International Searching Authority and Preliminary Examining Authority under the PCT and the coming into force of Patent (Amendment) Rules 2013.

Amendment to Rules  4, 9, 17, 18, 19  are in conformity with Indian Patent Office becoming International Search and Examining Authority.

Link to amended Rules -http://www.ipindia.nic.in/ipr/patent/patent_Amendment_Rules_2013.pdf

Detailed Information at http://ipindiaservices.gov.in/isaweb/

For any suggestions/query you can email me at securingip@gmail.com or please drop in your comments

GLAXO’S SALT VERSION OF ITS CANCER DRUG REVOKED BY IPAB INDIA

In India where death among poor or middle class in absence of affordable medicine is not uncommon, evergreening of pharma patents pose a big threat to the battle of providing affordable medicine to the mass. Pharmaceutical companies make minor changes to the already patented product in order to gain further monopoly period. “Evergreening” has been the cause of concern and debates across the globe and particularly in India post Supreme Court’s decision against such practice in the Novartis case, it has now become mandatory to be strict while interpreting “improved efficacy” of new version/enhancements of patented product.

Glaxo ‘s Patented Breast cancer drug  “Lapatinib” and its Patented Salt version, claiming to enhance its efficacy and marketed as “Tykerb” , came under attack when “Fresenius Kabi Oncology Ltd” initiated Revocation proceedings against them.

Patent no.221017 and Patent no. 221171 were opposed by Fresenius Kabi Oncology Ltd., taking the ground that both patents lacked innovations. On 27^th July 2013 the Intellectual Property Appellate Board of India (IPAB)  upheld patent no. 221017 granted for the main compound Lapinitib, confirming it passed the patentability test, whereas Patent no. 221171 was Revoked on the ground that invention is obvious and hit by section 3(d).The Revoked Patent for “Tykerb”,  a medicine indicated in treatment of breast cancer, is the salt form of Lapatinib compound i.e lapatinib ditosylate salt.

Analysing the main objection under Section 3(d) of Patent Act,  IPAB pointed out that this invention cannot be held to enhance therapeutic efficacy. The enhancements compared to the prior art are moisture absorption property and increase in stability of the salts. IPAB ruled keeping in view Novartis Ag v/s Union of India (2007 4 MLJ 1153) - in which elaborate explanation is given on “efficacy” and which also emphasizes checking any attempt at repetitive patenting or extension of the patent term on spurious grounds. It clearly states that section3(d) meant specially to deal with chemical/pharmaceutical products, sets up a second tier qualifying standards in order to leave the door open for true and genuine inventions. It further explains how “for enhancement of known efficacy” not all advantages or beneficial properties are relevant, but only those properties that directly relate to efficacy are relevant for section 3(d). “Therapeutic efficacy” must be a narrow and strict interpretation.

IPAB Ruled that although there may be advantages in ways when compared to invention in Patent no. 221017, yet the advantages do not result in therapeutic efficacy. IPAB considering the law under section 3(d) and the guidelines laid by the Supreme Court in the Novartis case,  concluded that Patent no. 221171 is not an invention and the same deserves to be Revoked, it further ruled that to a person skilled in the Art, the invention was obvious.

For any suggestions/query you can email me at securingip@gmail.com or please drop in your comments

MADRID PROTOCOL FOR INTERNATIONAL REGISTRATION OF TRADEMARK BROUGHT INTO FORCE IN INDIA

Trademarks (Amendment) Rules 2013 and Provisions relating to International Registration of Trademarks under the Madrid Protocol have been brought into force in India since 8th July 2013 by Trade Marks Office notification dated 5^th July 2013 and 8^th July 2013 respectively. Thus, now one can file a single Trademark Application for Registration in many Countries. For further details on Madrid Protocol for International Registration of Trademarks please find my earlier post here.

For any suggestions/query you can email me at securingip@gmail.com or please drop in your comments

Trademark Registration Process In India

Ø  Trademarks are classified under different classes as per the law and these classes segregate goods in various categories. So before one proceeds with applying  for Trademark Registration, it is very important to ascertain under which class the Trademark Application falls. Hence, to get Trademark Registered for goods to be marketed under it, Application should be filed in the class to which these goods belong.

Ø  The next step is to make a comprehensive search in the official record for any prior Application/Registered identical or similar mark.

Ø  In case of no prior identical/similar mark, one can file Trademark Application along with official fees with the Indian Trade Mark Office.

Ø  An Application Number is allotted and Priority starts from the date of Application.

Ø  Formal Examination of Application by the Indian Trade Marks Office, regarding Registrability of the mark.

Ø  Official Examination Report will be issued to Applicant in case of objections raised by the Trademark Office.

Ø  Written response to the objections is to be submitted by the Applicant.

Ø  Further Hearing is scheduled before the Trademarks Examiner.

Ø  In case of successful hearing in favour of Applicant, Trademark will be published in the Trade Marks Journal by the Trademark Office.

Ø  A period of four months from the publication date is allowed for Application to be opposed by public.

Ø  In the case of opposition proceedings ending in favour of Applicant OR If there are no oppositions within 4 months from the date of publication, then the trademark registration certificate is issued by the Trademark Registry to the Applicant.

Ø  Once the trademark is registered, it is valid for a period of 10 years from the date of application which can be further renewed.

For any suggestions/query you can email me at securingip@gmail.com or please drop in your comments

UNITED STATES SUPREME COURT REJECTS CLAIM TO PATENT HUMAN GENE

On 13^th June 2013, in one of the most important case in the area of Biotechnology Patents between “Association For Molecular Pathology” and “Myriad Genetics”, the United States Supreme Court ruled that “A naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, whereas cDNA (Complimentary DNA) is patent eligible because it is not naturally occurring,”

A brief background on the case, Myriad Genetics developed tests that predict a woman’s  genetic tendency to particular cancer. Its research identified two human genes BRCA 1 and BRCA 2 that are associated  with an increased  risk of breast or ovarian cancer. If these genes mutate, it results in  high risk for developing breast and ovarian cancer. “Myriad Genetis” developed a test to screen for these mutated genes. Myriad’s Patent Application claim focused on the genetic information encoded in the BRCA1 and BRCA2 genes. When“Myriad Genes” patented its discovery, it prevented other diagnostics from testing to identify mutated genes. Thus, also making the test very costly for patients.

In the said case “Association For Molecular Pathology” argued in favour of declaring said claims of “Myriad Genetic’s” Patent Application invalid and emphasized that although Myriad researched and discovered the said genes but the contained genetic sequence were made by nature, not by Myriad. It further argued that when you lock up a product of nature, it prevents industry from innovating and making new discoveries.

The U.S Supreme Court in this matter held that although “Myriad Genetics” discovered cancer-associated genes,  merely discovering the location and genetic sequence of the genes does not render the same patent-eligible, as separating that gene from its surrounding genetic material is not an act of invention.

Hopefully this decision will help in lowering the prices for said tests as patients will have greater access to genetic testing with increase in number of test providers. It is to be seen now how this decision shall effect patent related processes and litigation. 

For any suggestions/query you can email me at securingip@gmail.com or please drop in your comments.

Draft Patent Rules 2013

Central Govt. by way of notification dated 6th May 2013 has published Draft Patent Rules 2013 to amend Patent Rules 2003 and has invited objections and suggestions.

Mainly the Draft Rules have proposed a 10% additional surcharge to be levied on the fees under various categories in case the Application for Patent or other documents are filed in physical mode, hence making electronic filing a more preferred option in future.

The said Draft Rule can be accessed at : www.ipindia.nic.in
The website also contains information on how to enroll/register for electronic filing of patent documents.


For any suggestions/query you can email me at securingip@gmail.com or please drop in your comments.

Google (Youtube) Wins Copyright Battle Initiated By Viacom

In 2007 New York based media giant VIACOM (which in collaboration with Network 18 owns channels like COLORS in India), filed $ 1 billion lawsuit against YOUTUBE (Youtube was bought by California based GOOGLE in 2006 for about $ 1.65 billion).Viacom accused Youtube of broadcasting 79,000 copyrighted videos on its website between 2005 and 2008 thereby illegally hosting videos that infringe on the Viacom's intellectual property, including popular content like MTV videos and TV shows like Comedy Central’s “South Park.”

Many content providers supported Viacom in the battle, including the Associated Press, Gannett Co, the National Football League, Garth Brooks, the Eagles and Sting. 

Google and Youtube were supported by eBay Inc, Facebook Inc, Yahoo Inc, Human Rights Watch and Consumers Union.

In its lawsuit, Viacom argued that users posting videos of Viacom’s programs, including South Park and The Daily Show contributed in YouTube’s explosive growth. In defense Google argued that the Digital Millennium Copyright Act protected YouTube from liability because the site promptly takes down infringing content once it is notified.

U.S. District Judge Louis Stanton, who presided over the case for several years, on 18th April ruled in favor of Google and YouTube considering their protection under the “safe harbor” provisions of the Digital Millennium Copyright Act, which is a 1998 law that limits the liability of websites if they remove content when notified of possible copyright violations. Safe harbor protection under the Digital Millennium Copyright Act, applies if an Internet service provider like YouTube “responds expeditiously to remove, or disable infringing content.”

After the loss VIACOM now is planning to Appeal against the said Ruling.

For any suggestions/query you can email me at securingip@gmail.com or drop in your comments

Courtesy:

Time

India Today

Hindustan Times

Business Benefit With Madrid Protocol For International Registration of TradeMarks

With India’s Commerce and Industry Minister Anand Sharma depositing India's instrument of accession at WIPO, India finally accedes to Madrid Protocol for the International Registration of TradeMarks, hence businesses can eventually protect their trademark in many countries by filing a single application with one set of fees. The said protocol will enter into force with respect to India in July, 2013. 

The Madrid system offers a trademark owner the possibility to have his trademark protected in several countries by simply filing one application directly with his own national or regional trademark office. The Madrid system also simplifies greatly the subsequent management of the mark, since it is possible to record subsequent changes or to renew the registration through a single procedural step.

Understanding the procedure in brief:

It is important to understand here that international trademark registration system is governed by two treaties, namely:

-the Madrid Agreement Concerning the International Registration of Trade Marks (1891) and

-the Madrid Protocol Relating to the Madrid Agreement Concerning the International Registration of Trade Marks (1989).  

Under the Madrid Protocol, International Trademark Application cannot be filed directly with International Bureau of WIPO, rather it is only to be filed through the Intellectual Property Office of one’s country or organization of origin.An applicant may freely choose his Office of origin (basic application country) on the basis of business  establishment, domicile or nationality. Where an Applicant has industrial or commercial establishments in different States that are party to the Protocol. In such a case, any of the Offices of the respective States may qualify as the Office of origin.

Under Madrid Protocol, an international application may be based on either:

-A registration with the Office of origin or

-An application for registration filed with that Office.

And the same may be filed in English, French or Spanish, depending on the Office of origin. Official forms for an international application, are available on WIPO’s website. As India being a signatory to the Madrid Protocol, the applicant, while making an international application to the National Office on prescribed form, may select from the list of the member countries where he wishes to protect the mark.

The Office of Origin shall on receipt of such international application, examine it to check whether the Application is in accordance and complies with the requirements laid. Thereafter the Office of Origin forwards the said Application to the International Bureau at WIPO, which examines the international application to confirm that it complies with the requirements of the Madrid Protocol. Any irregularities found are conveyed to the Office of origin and the applicant must remove the objections within the prescribed time limit.

On successful examination the International Bureau then Records the mark in the International Register, publishes the mark in the Gazette, and notifies each contracting party or member country that are the designated countries listed in the application, asking for their consequent approval, and granting of registration. Thereafter the Office of a Contracting Party adopts the exact procedure adopted for a direct national application . The initial date of receipt of the application by the Office of Origin, shall be the date of the international registration and the period of protection granted by an international registration is 10 years, which can be extended before the expiry of this period.

For Complete details visit the WIPO website : http://www.wipo.int/madrid/en/

For any suggestions/query you can email me at securingip@gmail.com or drop in your comments

Diabetes Drug War Between 'Merck Sharp and Dohme Corp (MSD)' and 'Glenmark'

Merck Sharp and Dohme Corp’s.(MSD) Anti Diabetes Drug JANUVIA and JANUMET Versus Glenmark Alleged Generic Drug Zita and Zita Met

Today’s sedentary lifestyle where definition of work has changed from physical work to hours of sitting before our computers and stretching our mind’s limit to the point of exhaustion, this coupled with nations growing addiction towards fast food, no wonder India is fast becoming the diabetes capital of the world.

“The More The Merrier” for Pharma Companies as the growing Indian diabetes drug market, with the second-largest diabetic population in the world, is one of the key growth markets for companies selling anti diabetes drugs and where there is money involved, litigation follows.

After the Hon’ble Supreme Court’s judgement against Novartis, another case against alleged generic drug production comes in forefront.Merck Sharp and Dohme Corp.(MSD) filed a suit against Glenmark alleging  Glenmark's drug infringed on the patents of its products branded JANUVIA and JANUMET.

Sun Pharmaceuticals has joined MSD's suit against Glenmark as Sun Pharmaceuticals, last year signed a license agreement with U.S.-based Merck to market the drug in India under the brand name Istavel Istamet.

MSD's move comes a week after Glenmark Pharma launched alleged generic versions of a range of anti-diabetes products sold by the US company under the brand names Januvia and Janumet. Glenmark has branded its medicines Zita and Zita Met.

Januvia and Janumet are patented and enjoy IP protection of 20 years in India.Launched in 2008, Januvia and Janumet (the medicines are among a class of products known as Gliptins) figure among the best-selling anti-diabetic drugs in India. Gliptins drugs help to raise insulin levels, the lack of which causes the blood sugar level to go down.

MSD, in its plea, alleged that the Indian pharma company has violated its intellectual property right over its anti-diabetes medicines, Januvia and Janumet, by coming in the market with their own drugs containing the same salts.

The Delhi High Court refused to grant interim relief to Merck Sharp and Dohme (MSD) which sought a restraint on Glenmark Pharmaceuticals on manufacturing and marketing Zita and Zita-Met.

Under the Drugs and Cosmetics Act of India, a company can apply for approval to market a patented drug four years after its launch. Glenmark has used this route to get an approval to launch the drug. Under the Drugs and Cosmetics Act, state-level regulators can grant marketing approval even if a patent exists, as long as the drug has been around for four years.

A strip of seven tablets of Januvia (50 mg and 100 mg) is priced at approximately Rs 300 while Glenmark’s version costs around 30 per cent less.Obviously MSD is extremely disappointed with the decision and will consider all options, including an appeal of the decision Whereas Glenmark said it has not infringed on the patents and respects patent laws and that it launched the drug after due diligence and research.

For any suggestions/query you can email me at securingip@gmail.com or drop in your comments

Courtesy:

Economic Times

First Post

Wall Street Journal

Pharma Giant Novartis claim to Patent modification on existing cancer drug rejected by Supreme Court of India.

Glivec is an important and expensive drug in the treatment of myeloid leukaemia that blocks cancer growth in patients and is already on the market. Novartis decided to seek a patent on a slightly altered version, potentially giving it a longer period of market exclusivity.

Novartis application for a patent for its new version of the drug, arguing that it was easier to absorb and therefore qualified as an innovation was rejected by the Controller of Patents in 2006.

 

The Appeal in said matter was finally decided by the supreme court of India on April 01, 2013 wherein the Hon'ble Court noted that the new drug is not significantly different from the old version. 

Section 3(d) of the Indian Patents Act, does not allow patents of new versions of known drug molecules, unless they make the medicine significantly more effective than before.

Novartis argued that better physicochemical qualities, such as shape of the molecule, stability, hygroscopicity and solubility, would satisfy the test of enhanced efficacy.

But the court decided that the changes were simply an attempt at "evergreening" – refreshing the drug so that a new patent would be granted – which is common practice in Europe and North America.

The decision is seen as a major boost for generic drugmakers in India who supply cheap medicines to poor people across the developing world.

India exports generic drugs worth $11bn including crucial anti-retrovirals supplied to Africa.

The ruling was welcomed by bodies such as Médecins Sans Frontières (MSF), Cancer Patients Aid Association in India (CPAA) and others. However, Novartis said the decision "discourages future innovation in India" and company will be cautious about investing in India, especially over introducing new drugs, and seek patent protection before launching any new products.

You can access the complete judgement at:http://www.indiankanoon.org/doc/165776436/

For any suggestions/query you can email me at securingip@gmail.com

Courtesy:

The Guardian,

BBC.

SIMPLIFIED PROCEDURE OF PATENT REGISTRATION IN INDIA

Patent Application can be made to Patent Offices in India at Mumbai, Delhi, Chennai, Kolkata by following three categories-

1. Inventor 
2. Inventor's Assignee 
3. Legal Representative of deceased Inventor and Assignee.

VARIOUS STAGES OF PATENT REGISTRATION

STAGE I

APPLICATION : 

Detailed Application along with all the required Forms in prescribed format  is required to be filed with the appropriate Patent Office. 

Form details are as under:

Form 1-Application for Grant of Patent

Form 2-Provisional/Complete Specification
Form 3-Statement and Undertaking Regarding Foreign Applications
Form 5-Declaration as to Inventorship

Link to download detailed forms is as under - http://ipindia.nic.in/ipr/patent/patents.htm

STAGE II

PUBLICATION : 

Thereafter the Application  is published in Patent Office Journal after 18 months from the date of filing of the application or the date of priority whichever is earlier. 

Early Request for Publication :

The applicant may also file a request for early publication with a prescribed fee .The above application is published ordinarily within one month from the date of the request. 

STAGE III

EXAMINATION :

Next step is examination of Application. A Request for Examination is to be filed for same. After the Request is filed within a period of 48 months from the date of filing of the application or  from the date of priority of the application ,whichever is earlier, the said Application is examined. 

A Examination Report stating the objections / requirements is communicated to the applicant or his agent, which is to be replied to and Application should be amended in order to meet the objections/requirements within the prescribed time.   

When all the requirements are met the patent is granted, the letter patent is issued, entry is made in the register of patents and it is notified in the Patent Office, Journal .

OPPOSITION TO GRANT OF PATENTS

Where an application for patent has been published under stage II, before the grant of Patent, any person may, oppose the same in writing to the Controller against its grant . Only after the opposition proceeding is decided in Applicants favour and other requirements are met, the Patent is granted.

For any suggestions/query you can email me at securingip@gmail.com