Journal of Intellectual Property Law & Practice Advance Access published online on May 23, 2008
Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpn085
| ||||||||||||||||||||||||||||||||||||||||||||||||||
© The Author (2008). Published by Oxford University Press. All rights reserved
Trade marks: not just for the rich and famous
Legal context: In a landmark decision, the Intellectual Property High Court of Japan enforced a Japanese pharmaceutical patentee's crystal form patent to stop a Japanese generic drug maker, even though the basic substance patent on its blockbuster antibiotic compound had expired some 5 years earlier.
Key points: Pharmaceutical companies are extremely dependent on rigorous patent protection against relentless generic competition resulting from recently increasing patent expirations. The article provides a snapshot of similar crystal form patent litigation developments in the commercially important pharmaceutical patent jurisdictions such as Japan, the USA, and Europe.
Practical significance: Pharmaceutical patentees can now utilize crystal form or second generation patents as part of their Japanese patent strategy to enlarge the scope or length of patent protection over the product.
Key Words: Legal protection for suggestive and descriptive trade marks should be lessened, rather than increased. • Advertising spending and sales volume as tests of trade mark strength should be abandoned. • Traders need to be incentivized to be creative in coming up with new trade marks, not just to spend a large budget in hopes of monopolizing common descriptive terms and basic colours and shapes
* Robert M Kunstadt is the managing attorney of R Kunstadt, PC, New York, NY; an Associate Member of the International Trademark Association and former Editor-in-Chief of the Trademark Reporter. This article is dedicated to the memory of the author's father, George H Kunstadt (1922–2008). Email: mail{at}rkunstadtpc.com.