1. COMPETITION - McCarthy TÃ©trault

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EDP Operators may only provide such services to financial institutions, PFS , UCIs or pension funds set up under Luxembourg or foreign laws. Pursuant to the New Law, EDP Operators will have, amongst other obligations, to obtain a license from the Ministry of Finance and to justify a share capital of at least one million and five hundred thousand euro. For more information visit: http://www.etat.lu/legilux/DOCUMENTS_PDF/MEMORIAL/memorial/a/200 3/a1121408.pdf or contact: LE_GOUEFF@vocats.com 8. INTELLECTUAL PROPERTY BRAZIL LEGAL PROTECTION FOR SOFTWARE On 30th June 2003, a decision of the 3rd Panel of Superior Court in Special Appeal No. 443.119/RJ extended to software the same protection that the law previously afforded to other intellectual works. The notable case marks the first time that the highest court recognized the copyrightable nature of software, which had already been expressly granted under Law 9609/98 (the "Software Law"). This decision is also notable for the penalty assessed - the infringer was penalized with damages in an amount equal to 3,000 copies of the counterfeit product. The Copyright Law provides for this amount of damages whenever identifying the number of counterfeit copies would be impossible task. For more information please contact: rapdecunto@pinheironeto.com.br EU REGULATION ON ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS On 30th January 2003, the Council of the European Union proposed a regulation on the enforcement of intellectual property rights. The proposed directive (the "Directive") concerns customs action against goods that are suspected of infringing intellectual property rights. The vote on this Directive has been delayed to November because of the European Institution. The European Parliament member responsible for guiding the proposal has not yet produced the report on the draft legislation. Criticism of the proposal is significant, which is being compared to a controversial U.S. law. On the one hand, the Directive has drawn dismayed reaction from copyright holder lobbyists, in particular from the International Federation of the Phonographic Industry (the "IFPI"). Copyright holders seek alternative measures by which to develop the regulation. They argue that more than 1 billion pirated music CDs have been sold; thus, where one in every three CDs is illegal, the IFPI has lost $4.6 billion due to piracy. Conversely, such large earning potential has garnered support for the Directive from certain large high-tech companies, such as Microsoft. On the other hand, civil liberties groups criticize the Directive on the ground that it poses a threat to civil liberties, innovation and competition policy. According to critics, large multinationals stand to reap the greatest benefit from such enforcement of intellectual property rights. Indeed, the Directive bans reverse engineering practice. Moreover, an analysis of the Directive's implementation predicts that the law would both damage European scientific research and limit consumers' rights. Finally, although the Directive permits modification of the patentability of computer-implemented inventions, according to computer scientists and developers, it would increase the grip of multinational companies on the software industry. For more information please contact: LE_GOUEFF@vocats.com INDIA INDIA GRANTS FIRST EXCLUSIVE MARKETING RIGHTS On 5th September 2003, India's Controller General of Patents, Designs and Trade Marks granted the first ever exclusive marketing right (the "EMR") in India to United Phosphorous for sale of its fungicide, which is sold under the brand "SAAF." The few applications, which were filed earlier by various companies, were not approved by the Controller on various grounds. EMR entitles the EMR holder to have the exclusive right by himself, his agents, or licensees to sell or distribute in India the article or the substance on and from the date of approval granted by the Controller for a period of five years or until the date of grant or rejection of patent application, whichever is earlier. The provisions for the grant of EMR were introduced in the Patents Act, 1970 by the Patents (Amendment) Act, 1999, to bring the Patents Act, 1970 in compliance with Agreement on Trade Related Aspects of Intellectual Property Rights (the "TRIPS"). TRIPS required insertion of EMR provisions with effect from 1st January 1995 pending introduction of the product patent regime in the developing countries. The product patent regime is scheduled to come into effect on 1st January 2005. EMRs can be granted with respect to substances intended for use or capable for being used as medicine or drug. However, no EMR can be granted with respect to chemical substances that are ordinarily used as intermediates in the preparation or manufacture of any of the medicines or substances. Under the amendment of 1999, Patent Offices are required to accept the product patent applications and keep them in what is known as the "Black Box" until 1st January 2005, when such applications will be examined for the grant of patent. In the meantime, the applicant can apply to obtain an EMR, which is granted if the following requirements are satisfied: For inventions made in India or outside of India if: • before filing an Indian application, applicant has filed an application for the same invention in a convention country on or after 1st January 1995; • the approval to sell or distribute the article or substance in the basis of appropriate test conducted on or after 1st January 1995 is granted in such convention country; and • applicant has received the approval to sell or distribute the article from the authority specified in this behalf by the Central Government. For inventions made in India: • before filing an Indian application, applicant has filed an application on or after 1st January 1995 for method or process of manufacture for that invention relating to identical article or substance and has been granted the patent on such application; and • applicant has received the approval to sell or distribute the article from the authority specified in this behalf by the Central Government. ISSUE 22 SEPTEMBER – OCTOBER 2003 6
United Phosphorous had already received a process patent for SAAF in 2001 while the product was introduced in the market and had been gaining market share. This first approval of an EMR, paves the way for more favorable EMR decisions till the start of 2005 when the "black box" will be opened and pharmaceutical patents will gain momentum. Delhi makes Trade Mark search mandatory before granting manufacturing license. In a move to curb the spread and sale of counterfeit drugs, the Drugs Control Department of the National Territory of Delhi has made search reports from the Registrar of Trade Marks mandatory before approving any drug-manufacturing license under a particular brand name. This initiative by the Delhi Drugs Authority was made pursuant to observations in the Supreme Court decision of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (decided 26th March 2001). In paragraph 41 of the said judgment, the Supreme Court observed as follows: "Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940 which inter alia indicates an imitation or resemblance of another drug in a manner likely to deceive being regarded as a spurious drug it is but proper that before granting permission to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade Mark office pertaining to the trade mark in question which will enable the drug authority to arrive at a correct conclusion." This provision of requiring search reports of trade marks if adopted in the other States in India will eliminate the chances of approval of a deceptively similar and look-alike brand of drugs. The Government of India has appointed Mashelkar Committee to study the various aspects of the growing threat from spurious drugs and give its report thereon. The committee has submitted its interim report. The drug regulatory officials have echoed their feelings and hope to get a positive response from the report in this regard. For more information please contact: vaibhav@nishithdesai.com INDIA NEW IP LAWS ENTER INTO FORCE On 15th September 2003, the Indian government effectuated the Trade Marks Act, 1999 (the "TM Act") and the Geographical Indications of Goods (Registration and Protection) Act, 1999 (the "GI Act"). India's induction of these laws fully complies with the Agreement on Trade Related Aspects of Intellectual Property Rights (the "TRIPS"). While the TM Act replaces earlier legislation - namely, the Trade and Merchandise Marks Act, 1958 - the GI Act is a new law that grants statutory protection to the Geographical Indications of Goods. Also on 15th September 2003, the government established the Intellectual Property Appellate Board in Chennai with benches at Ahmedabad, Delhi, Mumbai, and Kolkata. Now the Appellate Board will hear appeals from the decisions of the Registrar of Trade Marks and Geographical Indications. Trade Marks appeals that are currently pending before various High Courts stand to be transferred to the Appellate Board. TM ACT Among other salient features, the TM Act expands the definition of the term "Trade Mark" to cover the shape of goods, their packaging, and their combination of colors. It also introduces the registration of both Service Marks and Collective Marks, granting statutory protection to such marks. Service Marks were not registrable under the 1958 legislation. Therefore, prior protection available for Service Marks was through an action of "passing off." Entries 35 to 42 in the Fourth Schedule of the Trademark Rules, 2002, list the classes of services. The classification complies with the Nice Classification of Goods and Services. Collective Marks will be owned by associations, including those representing accountants, engineers, or architects. The members of such associations will be allowed to use the Collective Mark to identify themselves with a level of quality and other requirements as set by the association. Additionally, the TM Act: • permits the filing of multi-class applications. • increases the term of registration and renewal from seven to ten years. • recognizes the concept of "well-known Trade Mark," thus prohibits the registration of a mark that is merely a reproduction or imitation of a well-known mark, even with respect to different goods or services. • recognizes offenses relating to falsification of Trade Marks and application of false trade descriptions - i.e., police may take cognizance of the complaint without obtaining order from the magistrate. Police are empowered to search and seize goods or other instruments involved in committing an offense. However, it will be mandatory for police to obtain the opinion of the Registrar as to facts involved in the offense relating to the Trade Mark. This requirement is likely to delay the search and seizure procedure. • widens the scope of the definition of the term "infringement." For instance, use of a registered Trade Mark as a part of a corporate name or use of a mark in comparative advertising if such advertisement is contrary to honest practices or is detrimental to its distinctive character, amounts to infringement. • obliterates the "disclaimer" provision. • increases, considerably, the application fees in the Trademarks Rules, 2002. For example, the registration fee has been increased from Rs. 300/- to Rs. 2500/-. GI ACT The GI Act was passed with the objective of providing protection to a Geographical Indication, including any agricultural, natural, or manufactured goods, or any goods of handicraft or industry, including foodstuff. Geographical Indications identify a good as originating in a place where a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical origin. Among well known examples of Geographical Indications are "Champagne," "Bordeaux," and "Chianti." Each region is famous for its wine - the first two are regions in France and the third is a region in Italy. Examples in the Indian context are "Banarasi Saris," "Kolhapuri Chappals," "Lakhnowi Kurta," and "Darjeeling Tea." A Trade Mark that consists exclusively of marks or indications that serve to designate the geographical origin of goods or services cannot be registered under the TM Act. The purpose of a Trade Mark is to denote the origin of the goods from a particular trader. In the case of a geographical name, the name would lead the consumer to believe that the goods originate from that place and thus cause confusion and even deception. To be recognized as a Geographical Indication, a product must satisfy both the territorial aspect and that a given quality, reputation, or other characteristic should be essentially attributable to its geographical origin. All goods have been categorized in different classes in accordance with the International Classification of goods for the purposes of registration of Geographical Indications. ISSUE 22 SEPTEMBER – OCTOBER 2003 7
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