1. COMPETITION - McCarthy Tétrault

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