Archives for March 2011
If a pharmaceutical drug enjoys patent protection in Malaysia under the Patents Act 1983, can the Drug Control Authority (DCA) of the Ministry of Health grant marketing approval for another generic drug allegedly falling within the claims of the patent and applied for by a rival company? And if marketing approval is given, can the rival company market the generic drug without infringing the patent or without consent of the patentee? Pharmaceutical drug marketing companies often face this dilemma.
This issue recently came up before the High Court in Kuala Lumpur in the case of Ranbaxy (M) Sdn Bhd and E.I. Du Pont De Nemours and Company (Suit No.: D5(IP)-22-16-2009). In the dispute between the two pharmaceutical giants, Ranbaxy argued that since it has obtained DCA approval for its COVANCE drug, it should be allowed to market the drug, notwithstanding the drug may have infringed Du Pont’s MY-110414-A patent still subsisting in Malaysia. The High Court, in its decision on 18th February 2011, held that obtaining DCA approval does not exempt the product from the exclusive rights granted to a patentee. Therefore Ranbaxy’s drug, on the facts of this case, was held to infringe Du Pont’s patent.
As technical innovation finds its way into the Medical Industry, it is vital for developers of medical devices to observe the latest technology trends and sufficiently understand intellectual property laws to promote growth in the Industry.
This one-day workshop is intended for General Managers, Directors, In-house Legal Counsels and Production Managers in the Medical Devices Industry. It will review and address the implications of the impending Medical Devices Act to the Medical Industry, and cover emerging trends and essential issues pertaining to Intellectual Property within the Industry.
Many a time clients have enquired whether a trademark search is necessary before they apply for a trademark registration. And many a time we have responded with a “Yes, it is highly advisable as it will ascertain whether the application will be a smooth and successful process or whether there will be a rocky road ahead, resulting in a refused registration”.
This case evidences that trademark searches are indeed necessary and that search results should be accompanied by a legal opinion from an experienced IP lawyer with regard to the similarity of the prior mark on the Register to the subject mark applied for. Festina Lotus S.A (“the Appellant”), founded in Switzerland in 1902, was a company that sold and distributed watches and was also the registered proprietor of two variants of trademarks registered in Singapore. The Appellant’s first and second marks are shown below:
Danone Biscuits Manufacturing (M) Sdn Bhd V. Hwa Tai Industries Bhd
FOOD manufacturers would stand to gain from paying close attention to a recent High Court decision on a case involving claims of trademark infringement and passing off. On 29 October 1990, Danone Biscuits Manufacturing (M) Sdn Bhd (“the Plaintiff”) applied to register their “ChipsMore” trademark in Malaysia, for, amongst others, chocolate chip cookies. The trademark was registered and renewed up to 20 October 2007. The Plaintiff has been manufacturing, distributing and selling these cookies in Malaysia since 1990, and has also exported the same to other countries in the region.