Intellectual Property & Technology Transfer - Case Study Example

Intellectual Property & Technology Transfer and Section # of The case is about a problem created when a company applied for a Trade Mark. The brand was already being used by another company which was not only earning wholesome money from it but was also a reputed one. This launch was capable of causing loss to the already running brand. Not only this, but it would effect the repute of the well known company. Viewing the circumstances the well known company applied to refute the new application. The application for new brand was given in 29 November 2006 by Hffner GmbH to register the trade mark 'EXIMED' in 5 Class. This was in respect to 'chemical products for sanitary and medical use, medicines, pharmaceutical drugs and preparations' 'cosmetics perfumes, soaps and shampoos were applied in respect of Class 3. This application got on air in the Trade Marks Journal right next year that is January 2007. The well reputed company that opposed the application was Lloyd's Preparations Ltd. ('Lloyd's). The point behind the opposition was that it already had a registered trade mark for 'ECZIDERM', registered in Class 5 and not only this but it was also registered for 'all use in the treatment of eczema pharmaceutical preparations and substances'. This registration had the number 1075423 and the filing date was12 June 1989 that is far older than the new application and they had made a name in the sales. In 2003 Lloyd's had also registered a corresponding trade mark in France for 'ECZIDERM'. The first and most important point that arises is that a well reputed company which has been using a brand for years has the right to go against any other company who is trying to use their name. It was directly effecting the reputation of the brand and the company. Apart from law it is a thing of common sense that no company would ever at any cost bear the name of their company being used by others in any way. The opposition was made on provision of the Trade Marks Act 1994. According to Trade Marks Act 1994, 'the mark applied for is not capable of distinguishing the applicant's goods from those of the opponent'. It is evident that the trade mark which was applied for was already widely being used. It was launched long a go. Many products that had the mark ECZIDERM were regularly being exhibited at British Association of Dermatologists annual meetings. Not only this but also they were advertised in medical publications including, 'Chemist and Druggist' 'British Journal of Dermatology' and 'General Practitioner'. These were the most popular and widely read journals. If the trade mark would have been re-registered it would go against the section 3(1)(a) law. Lloyd's had been spending approximately 250,000 on publicity and sponsorship of products over the last three years. This was not only spent on products that had the trade mark ECZIDERM but also on the use of sales representatives. Lloyd's ECZIDERM products have been upheld straight away to doctors with the help of sales representatives and also by mailing directly. So the brand or the trade mark was not to be used again in the same contexts. The second objection raised by opponents was that of section 3(6) - 'the application was made in bad faith'. The main reason for the rhyming trade marks was to get rapid fame of the product by using the name of other company. The evidence is that the sales of Lloyd's were made in all chief rural and urban cities all around UK. Lloyd's had already used registration of ECZIDERM as a trade mark in the UK. So this name had already earned considerable support and reputation, if the other rhyming product was launched, it would have got false fame by betrayal of people. It had earned so much fame that the mark ECZIDERM had also been entitled to protection under the Paris Convention for the quality of being well known. Hffner GmbH had probably applied for the trade mark EXIMED intentionally to take advantage of the well known repute of the previous mark ECZIDERM. As the applicant was well aware of the hightened reputation of brand, he decided to take advantage of it. This is proved in the evidence when he claims by the phrase he quoted ' if you advice that any opposition will fail, we will proceed in the hope of increased sales of our products on the back of the already well established trade mark used by Lloyd's'. this was a clear cut evidence that the application was made in bad faith, so it should be rejected. The forth provision of Trade Mark Act on which the opposition was made is section 5(2)(b) - 'the applicant's mark is similar to the opponent's earlier mark and is proposed to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected which will cause a likelihood of confusion including a likelihood of association on the part of the public'. The same was the intention of the applicant. The Lloyd's had been using the trade mark ECZIDERM in the UK for years; they started in 1974 for a vegetable tar preparation (in cream form) which was used for the treatment of eczema. Since then the product had produced much recognition, the applicant is trying to sale the new product by creating confusion for public. The main idea was that the people will get the illusion of the old trade mark and will use the new brand in innocence. After the first launch by Lloyd's a chain of products was made which also contained a shampoo, bath water etc that ran under the same mark. Hffner GmbH had also applied to register the trade mark the word 'EXIMED' for same kind of stuff that is chemical products for medical and sanitary use, pharmaceutical drugs soaps, and cosmetics shampoos etc and this is exactly against the law. It should be opposed on these bases without any doubt of denial. According to section 5(3) - 'the use of the applicant's mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the opponent's mark, being an earlier trade mark having a reputation in the UK'. Firstly the Lloyd's was already being used in UK, so the application went against the rule, it should be rejected. It has already been proved with many evidences that Lloyd's brand had earned a lot of fame and it can be proved and re-proved with the truth that in the three years sales being done in UK, the goods that had trade mark of ECZIDERM have been rationally averaging almost 225,000 units per annum, with an annual turnover value (wholesale price) of approximately 800,000 per annum. In a specialist area of products for treating eczema this is one of the major products and it had been representing around 45 per cent of the total UK sales for the same group products. The applicant of new product trade mark would take an unfair advantage of this sale and the popularity would support the incapable product too. As in UK only one mark is being used 'ECZI' and the only other marks currently in use beginning with the phonetically similar 'EX-' in the same, similar or any related field are 'EXERIN' for the treatment of acne, 'EXIGEL' used in the treatment of eczema and 'EXOREX' used in the treatment of psoriasis. The new brand would easily submerge in the old brands and make a name automatically. After all these evidences and laws of Trade Marks Act 1994, the application should be simply denied. According to section 5(4) - 'the use by the applicant of the mark is liable to be prevented by the law of passing off in the UK'. According to the above evidences it is necessary that steps should be taken to stop the application from being accepted. Hffner GmbH had applied to register trade mark the word 'EXIMED' with the intention of making better sales by taking advantage of the Trade Mark of a well reputed company. The intentions of Hffner GmbH are clear and his own quotation that I have quoted earlier proves that it was a trick to create illusion for public. An appropriate action should be taken against the application so that the violation of rules can be punished. The owner related it that pharmaceutical are usually given trade marks by extracting an abbreviation of essential active material used for its preparation. Otherwise they are taken by the illness. So in the case, his Company would pose to take the contraction EXI from the illness eczema. But this is not a reason to steal a name of already working brand. So an appropriate action for the denial of application must be taken to so that it should not be passed off in UK and the quality of Lloyd's products can continue without dilution. This would not only save the name of Lloyd's but would also help and support any further effort for using the name of any other trade mark. Bibliography Roger E. Schechter 2003 Intellectual Property: The Law of Copyrights, Patents and Trademarks. Thomson/West William Rodolph Cornish, David Llewelyn 2003 Intellectual Property: Patents, Copyright, Trade Marks, and Allied Rights. Sweet & Maxwell World Intellectual Property Organization 2000 Wipo Guide to Intellectual Property Worldwide. World Intellectual Property Organization Trade Marks Act 1994 http://www.hants.gov.uk/regulatory/tradingstandards/trademarks.html Office of public sector information. http://www.legislation.gov.uk/acts/acts1994/Ukpga_19940026_en_1.htm Trade Marks Act 1994 http://en.wikipedia.org/wiki/Trade_Marks_Act_1994 Read More