News Bulletin
What's in a Name? Protecting Your Pharma Brand
To successfully market a pharmaceutical product in Australia, it is important to effectively manage the branding of your product through careful selection of a trade mark, labels, marketing slogan, company name, logo and company image. A well-chosen and registered pharmaceutical trade mark will provide you with a valuable proprietary right to use, and prevent others from using that trade mark.
When selecting a trade mark for a pharmaceutical product, there are a number of general considerations, and a number of considerations particular to pharmaceuticals.
Generally, you should ensure that a chosen mark is distinctive and is not descriptive of the therapeutic goods to which the mark is applied; identical or similar to a registered trade mark for similar products; similar to a well known trade mark which has acquired a reputation in Australia; or a geographic name or common name of persons.
Particular to pharmaceuticals, you should firstly ensure that the selected mark is not substantially identical to a notified International Non-Proprietary Name (INN) or identical to a notified INN stem (generic stem). INNs are generic names indicating the pharmaceutical substances or active pharmaceutical ingredients which are identified by the World Health Organization. Generally, INNs or INN stems are not available for trade mark registration for pharmaceutical goods. INN stems are intended for use by medical practitioners, pharmacists, or anyone dealing with pharmaceutical products to enable them to recognize that the substance belongs to a group of substances having similar pharmacological activity.
For example, if you wish to register the trade mark BLUCAINE, the Trade Marks examiner will require the following endorsement on the registration:
It is a condition of registration that any use in respect of pharmaceuticals will be limited to such goods containing substances belonging to the pharmacological group designated by the International Non-Proprietary Name stem CAINE.
The stem –caine in the INN system refers to substances containing local anaesthetics. The Office will not accept the application for registration of this mark without the endorsement.
A full list of INN stems can be found here: http://www.who.int/medicines/services/inn/StemBook2009.pdf
A further requirement to be considered when selecting a trade mark for your pharmaceutical product is that the mark meets the requirements under the Therapeutic Goods Act 1989 (Cth) ("the TGA Act") in respect of selection of trade/brand names for therapeutic goods, if you intend to register or list your product on the ARTG. The TGA will closely examine the trade mark (brand name) of the product to ensure that the name, once registered or listed, will not mislead or confuse the public. In determining whether to grant approval for registration or listing, the TGA considers, inter alia, under section 3(5) of the TGA Act, “If a name applied to the goods is the same as the name applied to other therapeutic goods that are supplied in Australia where those other goods contain additional or different therapeutically active ingredients.”
In respect of prescription medicines, the Australian Regulatory Guidelines for Prescription Medicines set out the factors which need to be taken into account when assessing a proposed trade/brand name for prescription medicines. A proposed trade/brand name for prescription medicines should not (inter alia): “…be able to be confused with another trade/brand name of an existing product either when spoken or written down.”
If the proposed name for the prescription medicine or product is not acceptable, the sponsor will be requested to change the name.
In conclusion, careful and considered selection of a trade mark for your pharmaceutical product is essential. Prosecution costs can be greatly minimized, and you have a strong mark with which to market your product. An experienced trade marks attorney can be invaluable in assisting with the searching and selection process.
Fisher Adams Kelly Client Wins Inventor Of The Year 2011
Fisher Adams Kelly would like to congratulate its client, Edward Evans, who was announced last night as ‘Inventor of The Year’ on ABC’s The New Inventors.
Edward, 60, from Inverell NSW, has been involved in the cattle industry all of his life and is the inventor of The Swing Gate, which is designed to minimise the risk of injury to farmers when livestock charge in confined spaces, such as a cattle truck or a cattle yard.
With thousands of injuries (from serious to fatal) resulting from cattle handling each year, The Swing Gate has dramatically increased safety for operators and livestock.
The innovation behind The Swing Gate’s success is a hinge which allows the gate to bend if charged by cattle, preventing gate operators from being struck by the full force of the impact. What’s more, the gate can be retrofitted easily, allowing existing cattle yards to increase safety for their livestock and operators.
Edward has been a client of Fisher Adams Kelly since 2009. When Ernest Graf, Patent and Trade Marks Attorney first met The Swing Gate inventor, he was impressed by the implications Edward’s invention had for the cattle industry, “Ed’s great enthusiasm and sincere desire to improve safety for livestock workers was clear from day one. He is making this a success because he knows that his invention is a much needed improvement.”
This isn’t the first time Fisher Adams Kelly clients have been recognised for intelligent innovation. In the 2009 series of The New Inventors, Col Chamberlain was awarded Inventor of The Year for his safety propeller, while Matthew Walker was a finalist for his Passwindow electronic transaction security cards.
Using Accepted Australian Claims To Accelerate and Assist Prosecution of US Claims Under Revised PPH
The Australian Patent Office (IP Australia), The United States Patent and Trademark Office (USPTO) and several other patent offices around the world have announced a revised pilot program for the Patent Prosecution Highway (PPH). The program will enable more patent applicants to take advantage of favourable patent prosecution results achieved in one country to accelerate and assist prosecution in another country. The program commenced on 15 July 2011 and is planned to operate as a pilot program for one year.
Under the previous PPH rules, patent applicants could reuse search and examination results achieved in another country only if that other country was the first country in which an application was filed in a multi-country patent "family". Under the revised program, patent applicants can reuse successful patent prosecution results achieved on any patent family member from any office participating in the revised program.
For example, under the revised PPH program, patent applicants who first filed a patent application in the United States, and who subsequently filed a corresponding patent application in Australia, can now use a Notice of Acceptance of their Australian claims issued from IP Australia to accelerate and assist in prosecuting their corresponding US application. Patent examination in Australia generally can be expedited at low cost and prosecution concluded within a period of only several months. Thus receiving a Notice of Acceptance in Australia well before receiving a first office action on a corresponding application in the United States often can be achieved.
Other patent offices participating in the revised program include the Canadian Intellectual Property Office (CIPO), Japan Patent Office (JPO), National Board of Patents and Registration of Finland (NBPR), Federal Service on Intellectual Property, Patents & Trademarks of Russia (Rospatent), Spanish Patent and Trademark Office (SPTO) and United Kingdom Intellectual Property Office (UKIPO).
More information on the revised program (called the PPH MOTTAINAI Pilot) is available here.
For more information on how to best leverage Australian applications under the revised PPH program, please contact us on 61 7 3229 2655 (Brisbane), 61 3 9602 3144 (Melbourne) or 61 2 8216 0970 (Sydney). Or, email us at: mail@fak.com.au