What is a trademark?
The UK Trade Mark act of 19941 provides us with the definition of what a trademark is;
1. – (1) In this Act a “trade mark” means any sign capable of being
represented graphically which is capable of distinguishing goods or services
of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal
names), designs, letters, numerals or the shape of goods or their packaging.
The function of a trademark is to guarantee the origin of good or services and gives a business the ability to distinguish themselves from another.
To register your trademark in the UK you need to apply to the UK Intellectual Property Office (UKIPO). The office will search for similar or conflicting marks and examine if the mark being applied for is distinctive enough to be a trade mark and give you a decision on if the trademark can be registered, this can take a while of owners of similar registered marks raise objections to the application. If you would like to register in the UK with EU wide coverage you can apply at the Office of Harmonization in the Internal Market which covers all countries of the European Union.
Trademarks last for 10 years and after that it can be renewed for a further 10 years.
Marks that are highly distinctive are easier to register. Marks that are fanciful, arbitrary, or suggestive are considered distinctive enough to function as trademarks. If a mark is descriptive, the mark can function as a trademark or service mark only if it has obtained secondary meaning. Generic marks can never be a trademark2.
An example of a good trademark is PEPSI it is unique, has no other meanings and was only created to be a trade mark
- Trademark searching
When applying for Trademark registration there is a search conducted for conflicting marks to identify similar or identical marks for similar or same good or services. The application will get rejected if it conflicts with earlier Trademarks in the same field.
The trademark symbol ™ is a symbol used to indicate that the mark is a trademark, this symbol is generally used for unregistered trademarks, the symbol used for registered marks is ®.3
- Well Known marks
Famous or well-known marks are those that have gained recognition through use. Well known marks are usually protected whether they are registered or not as they have established goodwill with customers and the marks have gained a reputation in respect of the goods or services for which the mark is registered. The trademark owners in most countries are protected under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related aspects of the Intellectual Property Rights (The TRIPS agreement). ‘Google’ is one of the most famous trademarks which has also become a term people use for searching the internet, it is estimated that the mark is worth an estimated $44.3billion.4
- Trademark litigation cases in the pharma industry
Trademark law protects a trademark owner’s exclusive right to use a trademark when use of the mark by another would be likely to cause consumer confusion as to the source or origin of goods.
Ipca Laboratoires v Anrose Pharma6
Mumbai-based Ipca Laboratories bought an action of infringement against Anrose Pharma, when they discovered a similar drug that was being sold under a similar mark “ZEROVOLP”.
The mark with confusing similar the Ipca Laboratories mark ZERODOL and they argued that Anrose Pharma were using to make money on the goodwill of their registered trade mark. In the final judgement of the case Anrose Pharma were told not to use word ‘Zerovolp’ or ‘Zerovol’ by any manner and an injunction was given so they could no longer sell the infringement product.
8) Passing off
Passing off is a misrepresentation made by one party which damages the goodwill of another party.
In Intellectual Property terms it is the unauthorised use of a mark which is considered to be similar to another parties registered or unregistered trademarks.
Ciba-Geigy Canada Ltd. v. Apotex Inc.
Ciba-Geigy claimed Apotex versions of the prescription drug Metoprolol was causing confusion to the public due to their similar appearance to Ciba-Geigys version of the drug Lopressor. Ciba-Geigy needed to prove that the customers of these drugs were likely to be misled by the similarity of the products. At the trial Ciba-Geigy failed to establish confusion by customers (pharmacists) in choosing the brand of Metoprolol to give to patients due to the similar appearance of the tablets, therefore the case failed.5
Further blog coming soon on Passing off.