Archives for March 2010
If a product has a novel shape and configuration, appeals to the eye, and is not dictated by a function, then the shape can be registered as an Industrial Design. Upon registration, exclusive rights are given to the owner of the design for a limited period of time. Furthermore, if the shape of a product is distinctive it can be registered as a trademark in some countries (not so in Malaysia at present).
Pfizer has registered the unique shade of blue of the Viagra® tablet as a trademark in countries where colour of a product can be registered as a trademark. It also registered the unique shape of the tablet as a trademark in many countries.
Pfizer’s patent US No. 6,469,012 relates to its best selling drug “Viagra”. Following patent infringement claims by Pfizer against Eli Lilly, Lilly ICOS (makers of “Cialis”) and Bayer (maker of “Levitra”) had sought for re-examination of Pfizer’s ‘012 Patent.
The claim that is said to cover both “Levitra” and “Cialis” is claim 24.
24. A method of treating erectile dysfunction in a male human, comprising orally administering to a male human in need of such treatment an effective amount of a selective CGMP PDE sub-v inhibitor, or a pharmaceutically acceptable salt thereof, of a pharmaceutical composition containing either entity.
With the increase in registered capital requirements, tax rise and the tightening of labor and environmental laws in China, many factories are now making the move to Vietnam. The growth of manufacturing companies in Vietnam, in turn, results in a higher need for intellectual property (IP) protection there.The Vietnamese Government is aware of this change in the business landscape and has stepped up its efforts in matters relating to IP. When Dr. Francis Gurry, the Director General of the World Intellectual Property Organization (WIPO) visited the President of Vietnam, President Nguyen Minh Triet at the Presidential Palace on 20 January 2010, the President confirmed Vietnam’s commitment to IP protection and thanked Dr. Gurry for WIPO’sassistance in the establishment and development of Vietnam’s IP system over past years. Dr. Gurry also congratulated Vietnam on achievements gained over past years. He said “Vietnamis integrating into the world market, so intellectual property should play a very important role in the economic, scientific and technological development of the country.“
The Central Intellectual Property and International Trade Court in Thailand recently decided in favour of an Indian corporation, Colorplus Fashions, on the registrability of their trademark “COLORPLUS”.
The Applicant had previously applied for the registration of the mark “COLORPLUS” in Class 25 in Thailand, claiming apparel products. The word “COLORPLUS” in itself may not have a dictionary definition, but it is clear that it is a combination of the words “Color” and “Plus”, which could be translated as “adding colour” or “increasing colour”. The Thai Registrar of Trademarks refused registration of the mark, on the basis that the mark was descriptive of the goods it represents, i.e. apparels. The Registrar viewed that the word “COLORPLUS” referred directly to colourful or high-quality colours, and as such, was not in line with Section 7(2) of the Thai Trademark Act B.E. 2534, which states that a distinctive trademark consists of “a word or words having no direct reference to the character or quality of the goods and is not a geographical name prescribed by the Minister in the Ministerial Notifications”.
The Applicant then attempted to appeal this matter at the Thai Board of Trademarks, but the appeal was not allowed by the Boards for the same reasons as those laid down by the Registrar of Trademarks. The Applicant subsequently went on to file a civil suit before the courts in a further attempt to get their “COLORPLUS” mark registered.
In considering whether the “COLORPLUS” mark was registrable, the Courts opined that a word or clause contains a direct reference to the character or quality of the goods it represents if, when used in connection with a product, it enables consumers to know the character and quality of the particular product. The Courts viewed that the trademark “COLORPLUS” did not reveal the type, objective or quality of the Applicant’s products to consumers; rather, it merely served to attract the interest of consumers. The Courts therefore came to the conclusion that the “COLORPLUS” mark was distinctive and registrable in nature.
The mark “COLORPLUS” is, without a doubt, a suggestive trademark. There is often a fine line between trademarks which are directly descriptive and merely suggestive, and it is sometimes a difficult task indeed to differentiate one from the other. Case law has established that whilst directly descriptive marks are unregistrable, suggestive marks, which hint at the nature and quality of the trademark but does not directly describe its characteristics, may be registered. This case has provided a streamlined definition on what constitutes a direct reference to the character or quality of goods represented by a particular trademark, and in doing so, has helped stabilize, to an extent, this grey area of the law. It also provides a clear picture on what constitutes a descriptive, unregistrable mark, and a suggestive, registrable one.
If you have any queries on this issue, or would like more information on how to determine if your trademark is registrable, please contact us at email@example.com.
The Malaysian Invention and Design Society (MINDS) recently established the MINDS Institute of Invention and Innovation (MI3). MI3 intends to focus on Education (training & development) and Commercialization of Inventions (intellectual property services, financing) among MINDS members, schools, universities, the public and private sectors, as well as the community at large.
For details on what MI3 has planned for this year, click here.