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The importance of brand protection: life science companies are well aware of some of the aspects of Intellectual Property (IP) law. they understand the need to protect their products by registering patents. in addition to this form of IP protection, companies need to ensure that their brands are fully protected and don't infringe existing third party patent rights.

Brands are prevalent throughout the life science industry, ranging from pharmaceutical company names (GSK, Pfizer, Novartis) to the branding of individual products (Viagra, Prozac, Tamiflu). Brands act as a 'badge of origin,' allowing consumers to automatically identify the source of the branded goods or services. Trade mark registration gives the owner a monopoly right to use the brand in the countries covered by the registration. The owner can prevent third parties from using, in the course of trade, any sign that is identical (or similar) to the trade mark in relation to products or services that are identical (or similar) to those that the registration protects. For example, Merck recently prevented Trubion Pharmaceuticals from registering the trade mark, trubion. Merck successfully argued that trubion was similar to its earlier mark, tribion harmonis, covering "pharmaceutical preparations," and that if Trubion Pharmaceuticals was to use trubion in relation to similar products, it would be confusing for consumers.

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Typically, companies are inclined to name a new product after the chemical name of its principal component (Botulinum toxin = botox, for example) or after its indication. This allows consumers to identify the underlying component or function of the product. However, a trade mark will be refused registration if it is purely descriptive of the product it is advertising. To prevent this, life science companies are choosing names that incorporate non-descriptive elements as well as the chemical name. This ensures that the main component can be identified and the name can be afforded trade mark protection. For example, Laboratorios Diviser-Aquilea's product, cicatral, is so named because it is a cicatrizant--a medicine that promotes the healing of a sore or wound by forming a cicatrix (a scar). By registering cicatral as a trade mark, Laboratorios Diviser-Aquilea was able to prevent Bayer Healthcare registering citracal; the marks were deemed to be similar and both products were for the treatment of human health problems.

Before a company uses a chosen brand name, it should do clearance searches in all of the jurisdictions in which it is likely to use the brand. This will ensure that the brand name will not infringe any existing third party registrations. Failure to do so can result in infringing products being pulled from shelves, product packaging being destroyed and damages having to be paid to the rightful owner, not to mention the significant costs involved in rebranding the infringing products. Pfizer, the owner of the trade mark viagra, was recently in dispute with a Mr Mandl who was using the name styriagra on blue coloured pills derived from pumpkin seeds that were offered as a natural remedy for erectile dysfunction. With provisional proceedings at the Austrian Supreme Court going in Pfizer's favour, the parties agreed to settle the dispute out of court on confidential terms. However, styriagra is no longer available and we can only speculate whether the fact that Mr Mandl filed for bankruptcy soon after was in any way connected with its downfall!

Once a company has registered its trade marks, it needs to protect them by actively preventing unauthorized use. If brand owners allow competitors to 'ride' on the brand reputation they've built up, it can have significant financial implications and could irreparably damage its own reputation within the industry. If it is necessary for third parties to use the trade mark, strict licensing provisions need to be in place to ensure that such use is carefully controlled and that protection is not diluted or lost as a result. For example, if the use of the brand becomes generic (the brand becomes synonymous with the product description), trade mark protection can be lost forever. Aspirin and heroin are now considered to be generic and Allergan Inc., the owner of the botox trade mark, is aggressively going after infringers in an attempt to prevent botox going the same way. Although, in July 2008, the French High Court ruled that botox was now a generic term for botulic toxin products, other courts have disagreed. Most recently, on 12 May 2010, OHIM (the court that rules on trade marks that have EU-wide effect) ruled that botox was not generic as it maintained a high degree of distinctiveness through its use in "pharmaceutical preparations for the treatment of wrinkles."

A company's reputation can be built on the strength of its trade marks. However, if an effective trade mark strategy is not in place, third parties can take advantage of that reputation, which can ultimately result in the brand value diminishing and, ultimately, the reputation being irreparably damaged.

For more information

Rob Jacob

Associate, Stephenson Harwood

Tel. +44 207 809 2072

rob.jacob@shlegal.com

www.shlegal.com
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Title Annotation:business and marketing
Author:Jacob, Rob
Publication:Nutraceutical Business & Technology
Geographic Code:1USA
Date:Sep 1, 2010
Words:774
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