Gucci Lost Opposition

In a recent turn of events, Gucci an Italian fashion and leather goods brand has opposed a UK trademark application for a device mark claiming it to be similar to their famous GG logo. But the registrar ruled that the said device mark lacks resemblance to the GG logo and the mark does not conflict Section 5(3) (of UK Trademark Act) for protectionof well-known marks. The applicant’s device mark was also applicable to similar goods such as clothing line etc.

 Courtesy: Gucci accessories, lyst.com

Gucci has registered its GG logo via Community Trade Mark registration in EU and UK. In UK it is a registered mark for over 50 years which was described as two G’s facing each other creating a symmetric mirror image. The basis of opposition by Gucci was based on this description. But the registrar disagreed on Gucci’s claim stating that the applicant’s device was more analogous to ‘human torso’. He also argued that the consumers will pay more attention to the device per se and the perception to the similarity of the marks will be little.

Although Gucci provided many evidences to prove its point, registrar stated that the Gucci has failed to prove that Gucci’s device mark has brought a significant distinction to their brand and products upon use. This led to Gucci’s unfortunate loss in the case.

So the question here is how much is too much? What amount of similarity between the device marks makes them similar and deceptive? Although, it is also important to note that Gucci has been changing its GG logo for the purpose of rebranding and advertising, so will a differently arranged  double ‘G’ applied for the similar kind goods create confusion among consumers as a rebranded Gucci’s logo? Perhaps this question can be best answered by the consumers themselves.

Authored by Sai Ratna Manjari

Posted By Aurobinda Panda

For Biswajit Sarkar – Advocates – IP Attorney

 

 

Roche loses Herceptin Patent

After the landmark grant of Compulsory license (CL) for Bayer’s Nexavar to Natco last year, a trend of CL application seems to have started in India. Recently, health ministry has recommended CL for a breast cancer drug Trastuzumab after various campaigns held regarding the affordability of this expensive drug in India. However, Department of Industrial Policy and Promotion (DIPP) has refused the CL for Trastuzumab (Herceptin) manufactured by Swiss multinational Roche.

It was previously reportedthat the health ministry has suggestedrevoking the patent in public interest under section 66 of Indian patent act 1970. However, a recent clarification from Kolkata patent office suggests that the three patents for Herceptin were not revoked but were abandoned or withdrawn because Roche failed to file the documents before deadline and did not appear for the hearing concerning its Herceptin patent.Although, Roche did not make any comments regarding the lapse of its patent; the Herceptin patent IN205534 is diminishing due to its post-grant opposition. India awarded patent for Roche’s Herceptin in 2007 which is currently extended till 2019. Three more patents related to the original patents were further filed, but were withdrawn since Roche failed to meet the deadline. The request for examination of one of the patents was not filed before deadline, while the same was filed for other two after the patent grant, which is not permitted in Indian patent law. Herceptin is said to be the third biggest seller by Roche.

Although, the Herceptin patent is abandoned, the generic version of this drug may not come to the market anytime soon. Currently, Roche’s Herceptin sells for Rs.1,34,000 per vial but Roche also sells the cut price version of this drug through an Indian generic company Emcure Pharmaceuticals Ltd. at the cost of Rs.70,000 per vial. Any generic version of this drug in Indian markets will lead to patent infringement. Besides, this drug is a Biotech drug and developing such a drug under generic company set up is not easy.

There are speculations that CL was refused by DIPP after widespread criticism from International community on CL to Nexavar. In the recent times, Indian IP office has been serious about the submission of ‘statement of working’ or form 27 by the companies regarding their working of patents in India. However, last year for the first time this information from various companies has been made available to public. Although the reason behind the disclosure of such confidential information is not known but it is wondered that lack of such information by the company regarding the working of the patent in India or information on non-working of patent may favour companies seeking CL. On one hand,with government enabling affordability of lifesaving drug to patients and on the other hand critics pointing fingers at Indian IP laws, only time will where India’s healthcare is heading.

Authored by Sai Ratna Manjari

Posted By Aurobinda Panda

For Biswajit Sarkar – Advocates – IP Attorney

Madrid Protocol in India

The Madrid Protocol is an important step towards the international protection and recognition of trademarks. The protocol is actually an amendment to the Madrid Agreement Concerning the International Registration of Marks, which was revised at Stockholm, in 1967 and subsequently amended. This article attempts to focus on some of the key features of the Protocol and to what extent these features help the member countries or, the 'contracting parties' for securing the international registration of their trademarks.

Article 1 of the Protocol provides that reference to contracting party in the Protocol shall be construed as both a contracting state and a contracting intergovernmental  organisation. An important provision of this Protocol is Article 2, which deals with securing protection through international registration. This provision lays down the criteria for securing international registration of a trademark, such as, the applicant should be a national of a contracting party, or domiciled in a contracting party, or has a real or effective industrial establishment in the said contracting party. The main advantage of this Protocol is that the applicant need not individually approach every trademark registration office of the contracting states in which he wishes to get his trademark registered. All that is needed is that the applicant should approach the office of the contracting state and through this office, the application is to be sent to the International Bureau of the World Intellectual Property Organisation (WIPO) which shall then register the mark in the international register. Article 3 of the Protocol talks about the territorial effect of the registration. It says that application of the trademark to any contracting state shall be done only upon request made so by the applicant and thereafter, the trademark shall be construed  to be made applicable to each of the contracting parties.

Thus, the Madrid Protocol in India, by ensuring that the applicant, who seeks to get his trademark registered, not only ensures that the entire procedure for obtaining a registration is completed in a lucid way, but also significantly contributes towards reduction of time in filing an application, reduction of expenses which would otherwise have been undertaken by the applicant including expenses of engaging a lawyer, and also the applicant while filing an application is only required to file in one language and at one time and the benefits can be enjoyed in all the 89 countries who are members. Article 16 of the Protocol, which talks of signatures, languages with respect to the Protocol is an important provision. It says that the Protocol shall be signed in English, French and Spanish languages and shall be sent to the Director General who shall decide the official text of the Protocol. Another important advantage of the Madrid Protocol is that while in most countries, the process for obtaining the registration is cumbersome and may take a long time, this is not the case with Madrid Protocol. It mandates that the entire process for obtaining a registration shall be 18 months. This is provided in Article 5(2)(b) of the Protocol. But the above mentioned advantage is subject to the condition that the office of the contracting state has informed the International Bureau about the delay in filing opposition by others and the notification of refusal by the contracting state is made within one month of expiry of the opposition period.

There exist certain disadvantages such as limited membership, assignment of rights cannot be made to states which are not members of the Madrid Protocol, among others.

Some of the other key features of the protocol is as follows. For instance, Article 7 provides for renewal of the international registration of the trademark after every 10 years upon payment of fees for the same. Similarly, fees for registration of the mark include a basic fee, a supplementary fee for different classes of the mark mentioned in the application and a complementary fee for request for extension of the application of protection of the trademark. This is provided by Article 8 of the Protocol. The International Bureau of the World Intellectual Property Organisation (WIPO) is charged with the responsibility of preparation for revision of the Protocol in accordance with the direction of the Assembly and also for the international registration of trademarks. The Assembly of the Union, under Article 10 is the main institution which has to deal with all matters concerning implementation of the Protocol and any amendment proposed to be made with respect to the working of the Assembly or the International Bureau or financing of the Union shall be introduced by the Director General or the member states.

Very recently, India became the 90th member state to submit its instrument of accession for joining the Madrid Protocol, effective from 8th July, 2013. With this achievement, India became eligible for obtaining the benefits offered by the Madrid Protocol as are mentioned above. Concluding, it can be said that the objective with which the Madrid Protocol was introduced was to simplify the procedure for obtaining a registration of a trademark and thereby reduce time and cost spent on getting a registration, which would ultimately encourage more players in the area of intellectual property and thereby encourage competition and the Madrid Protocol has gone a long way in achieving this objective.

Posted By Aurobinda Panda

For Biswajit Sarkar – Advocates – IP Attorney

TRADE MARKS IN WORLD TRADE

The system of registration succeeded in most countries due to the pressure of the traders. Because it was difficult to negotiate bilateral arrangements with other countries, when their nationals could not be offered the protection of a registered right. The first step in the world scenario came up with the Paris Convention on the Industrial property of 1883.The Paris Convention at no stage provided any form of international application for registration in a number of countries. But as early as 1891, some Paris participants were prepared to take this step in the subsidiary Madrid Agreement. This allows an applicant who has registered a mark in his home or business country to deposit an international registration with an international office (now WIPO). The mark will then be registered in each other Member State designated by the applicant, unless that state raises an objection, under its national law, within 12 months.

For countries such as the United Kingdom, which have a full examination of applications, the Madrid Agreement in its original form has remained unattractive. It gives advantages to those with easier access to their home registers and as a consequence its fee structure has been unacceptable. In 1989, however, a Protocol to Madrid was negotiated which offered an alternative method of using the Madrid scheme. This Protocol attracted British approval and is being given effect under the 1994 Act.

Another such agreement was the TRIPS Agreement. It imposes an obligation on its participant states to apply the Paris Convention standards relating to the trademarks. It also cross-refers to those provisions at a number of points, supplements some of them in significant respects and imposes its own obligations in addition.

Authored by Anisha Pal

Posted By Aurobinda Panda

For Biswajit Sarkar

Patent in USA

This post is a case comment on the much-awaited decision Mayo v Prometheus. Main question posed before the Supreme Court was "Whether the claims of Prometheus preempt patent law?" The Court, in my view delivered a promising judgment disallowing the patenting of natural laws. Personal life science invention is a growing market in US. It is likely that following days will show the positive or negative repercussions of the decision. However, a lime light for Justice Breyer, who had been a minority in similar cases, found his war against monopolizing freethinking.

The United States Supreme Court on 20 March decided unanimously that patent of Prometheus claiming methods to administer thiopurine drugs to treat autoimmune diseases is void.

Prometheus was the sole licensor of thiopurine drug “When in­gested, the body metabolizes the drugs, producing metabolites in the bloodstream. Because patients metabolize these drugs differently, doctors have found it difficult to determine whether a particular pa­tient’s dose is too high, risking harmful side effects, or too low, and so likely ineffective. The patent claims here set forth processes embody­ing researchers’ findings that identify correlations between metabo­lite levels and likely harm or ineffectiveness with precision. Each claim recites (1) an “administering” step—instructing a doctor to ad­minister the drug to his patient—(2) a “determining” step—tellingthe doctor to measure the resulting metabolite levels in the patient’s blood—and (3) a “wherein” step—describing the metabolite concen­trations above which there is a likelihood of harmful side-effects and below which it is likely that the drug dosage is ineffective, and in­forming the doctor that metabolite concentrations above or below these thresholds “indicate a need” to decrease or increase (respective­ly) the drug dosage.”

Petitioners Mayo introduced their own method, which according to Prometheus violated their patent claims. The district court held that patent claims constituted principles of natural law, which preempts the patent law. Federal Circuit Court overturned the decision based on Machine or transformation test held in Bilski v Kappos. Now the Supreme Court of the United States has affirmed the decision of district court and held that patent claims are void.

The Court held that, “The “wherein” clauses simply tell a doctor about the relevant natural laws, adding, at most, a suggestion that they should consider the test results when making their treatment decisions. The “determining “step tells a doctor to measure patients’ metabolite levels, through whatever process the doctor wishes to use. Because methods for making such determinations were well known in the art, this step simply tells doctors to engage in well-understood, routine, conven­tional activity previously engaged in by scientists in the field. Such activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”

Section 101 of US Patent Act has an explicit exemption that “Laws of nature are not patentable.” The same idea was followed in various celebrated precedence like  Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 130 (1948), Dia­mond v. Diehr, 450 U. S. 175, 185 (1981); Bilski v. Kappos, 561 U. S (2010); Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980); Le Roy v. Tat­ham, 14 How. 156, 175 (1853); O’Reilly v. Morse, 15 How. 62, 112–120 (1854). 

The Court in Chakrabarty held that patentable subject matter includes anything under the sun that is made by man. “Made by man” is an important criterion for patentability because the cardinal patent eligibility criterion for a “principle of natural law” is that it must undergone substantial human intervention. The decision in Diehr is in direct relation to the facts of the case. In Diehr the claimed invention was a known mathematical formula, the Arrhenius equation, applied to identify the time to open a rubber press. The invention worked on the information about the temperature inside the mold, the time in which the rubber was inside the mold and thickness of the rubber. However, the court identified that invention as a whole had undergone substantial human intervention and hence patent eligible. To quote “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time” (at p.187 of Diehr).

In the present case, court identified that the claims only reinstating a process of natural law and there is no substantial human intervention to make the invention patentable.

By Aurobinda Panda

For Biswajit Sarkar