DRUG BRANDING
there is no specific regulation or guideline on how INNs are to be used in nomenclature of drugs.
Te Trade Marks Act of India explicitly prohibits registration of INNs and names that are deceptively similar to INNs. It further states that any such registration shall be deemed (for the purpose of section 57 of the act) to be an entry made in the register without sufficient cause, or an entry wrongly remaining on the register, as the circumstances may require. However there have been reported incidents where WHO has objected to the practice of Indian pharmaceutical companies misusing INNs as trademark- protected brand names.
In 2008, WHO wrote a letter to the DCGI expressing concern over a trademark application filed by Cadila Pharmaceuticals for ‘platin’, used for antineoplastic agents. Tere were already 18 INNs ending with ‘-platin’ at that time. Among several other objections, WHO objected to Docetax for being similar to the INN docetaxel, Prazole for being an INN by itself and Nanotaxel for including the INN stem ‘-taxel’, and had wanted the Indian drug regulatory authorities to take remedial measures.
It is pertinent to point out that even where the WHO recommends a name as an INN, it does not come within the ambit of protection offered by the Trademarks Act unless it is notified as such by the Trade Marks Registrar. Te registry recently published the list of INNs, enlisting 8151 pharmaceutical substances as INNs and as declared by the WHO. However, numerous marks that are mentioned as INNs in the list, including Ofloxacin, Lactulose and Retinol, are already registered in India. Tis notification renders them in violation of section 13 of the act.
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“BRAND LOYALTY AND EXTENSIVE MARKETING MAY LEAD TO MARKET MONOPOLISATION, A BARRIER THAT IS VERY DIFFICULT FOR GENERIC DRUG MANUFACTURERS TO OVERCOME.”
Te Trade Marks Act empowers the registrar (or the appellate board) to pass appropriate orders for cancelling or varying the registration of a trademark on the grounds of any contravention or failure to observe any condition entered in the register in relation to the mark. Further, any aggrieved person can also complain to them that a mark has been registered without sufficient cause, or has been entered wrongly in the register.
Terefore, if a complaint is made to the registrar or the Appellate Board in relation to registration of a trademark coined from INNs, the entry in the register may be expunged or varied. Moreover, the registrar may suo moto decide such issues on its own motion and cancel the registration of such mark
In 2009-2010, 22,274 applications (about 15.8 percent of the total 141,943 applications) were filed in Class 5. Te list of INNs as declared by the registry is therefore expected to help agents and applicants to assess their applications prior to filing for trademark registration, and to obviate expensive
Status wise break up of trademarks identical to INNs declared by registry 54
Status wise break up of Trademarks identical to INNs declared by Registry
Lucy Rana has been advising Fortune 500 companies and some of the world’s most esteemed corporations from multifarious fields and has actively contributed to growth in every sphere of the firm, from prosecution to successful litigations. Having majored in Japanese language and business management, Rana has channelled her innovative and pioneering strategies for delivering efficient, high quality and cost- effective results to the clients.
28 17 13 8 4 0 4 3 2 1 1 1 1
Pooja Thakur is proficient in all aspects of trademark and copyright matters including registration of trademark, searching, draſting assignments, licences, prosecution before the Indian Trade Marks Office and providing opinions related to queries of trademarks.
litigation later on. On the other hand, the INN- derived marks that are already registered are exposed to the risk of lawsuits by any public interest group, or other interested person, or the registrar. Tis may have repercussions for the businesses of drug manufacturers.
It is imperative that examiners are trained on the public health implications of the INN programme. Te registry may also consider seeking information on the component/generic name of the drug from applicants who are applying for trademarks on drugs. It is necessary to generate awareness on the use of INNs in the pharmaceutical industry in India, as well as making sure that medical and legal practitioners understand the implications. n
Lucy Rana is a senior associate at SS Rana & Co. She can be contacted at:
lucy@ssrana.com
Pooja Takur is trademark attorney at SS Rana & Co. She can be contacted at:
pooja@ssrana.in
www.worldipreview.com
World Intellectual Property Review May/June 2012
37
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