Allens Arthur Robinson: Biotech News

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Branding for biotechnology innovation

In brief: Partner Dr Trevor Davies (view CV) and Trade Mark Lawyer Lara Gun outline the issues for trade mark adoption and protection.

Trade marks
Trade mark selection
Prior to adoption
Trade mark filing and application procedure
Trade mark use
Seek advice

Trade marks

A trade mark is a sign or symbol used to distinguish one trader's goods or services from those of another. Trade marks may consist of words, letters, numerals, logos, shapes, colours, scents, sounds or combinations of these elements. While traditionally acting as a badge of origin and indicator of quality, trade marks also signify a desirable product image to consumers and act as a powerful marketing tool for proprietors. Trade marks are, therefore, a valuable commercial asset for any business. The effective defence and enforcement of trade mark rights is vital to protecting the goodwill and reputation of a business.

Trade marks can be formally registered in Australia under the Trade Marks Act 1995 (Cth) (the Act) or left unregistered and based upon an established business reputation or goodwill at common law.

The common law of passing off and an action for conduct likely to mislead or deceive under s52 of the Trade Practices Act 1974 (Cth) may provide broad protection to trade mark owners, provided relevant evidence is available. Trade mark registration under the Act confers strong and legally enforceable rights upon trade mark proprietors against other traders who may seek to use or register the same or a similar trade mark in respect of the same or similar goods or services. Trade mark registration provides a simple, reliable and more cost-effective mechanism for Australia-wide enforceable rights without having to rely upon proof of substantial reputation in the marketplace. The most robust protection is, of course, provided by all three regimes. Equivalent registration is available in most countries if seeking global protection for a trade mark.

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Trade mark selection

When selecting a trade mark, it is important to choose a mark that is both distinctive and unique to your business. The strongest marks are often those that include or comprise a distinguishing logo or device. It is important that your trade mark is not directly descriptive of the goods and/or services to which it will be applied, as this is a ground for rejection in the trade mark registration process. Similarly, a trade mark that includes a word or element that is common on the Trade Marks Register in respect of similar goods or services will be less distinctive and, therefore, more difficult to protect.

The trade mark should also not be substantially identical or deceptively similar to any existing trade marks, whether registered or unregistered, and used for the same or similar goods or services. The adoption of a trade mark that is similar to another trader's mark is likely to be cited as an objection during examination if registered and/or may also attract infringement proceedings from the proprietor of the similar mark.

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Prior to adoption

Prior to use and filing an application to register a proposed trade mark, it is prudent to conduct a full availability and registrability search of the Australia Trade Marks Register, as well as a check of all relevant common law indices. Common law indices include the Australian Electoral Commission database of common surnames, generic pharmaceutical names indexes, telephone directories, business names, domain names and the Internet. These searches are the most important pre-use and pre-filing step for any business owner with a proposed trade mark.

A comprehensive search will indicate whether there are any other deceptively similar or substantially identical trade marks that may prevent the use or registration of the mark for the goods or services of interest.

The investment in a full availability and registrability search can save a business proprietor substantial time and money. For example, potentially thousands of dollars can be wasted in preparing packaging, branding merchandise and advertising campaigns only to find another trader not only already has rights to the proposed trade mark but may also take action against your company for trade mark infringement. The cost of re-branding a product will add to the expense if a new trade mark must be adopted. Further time and expense may be incurred if an application to register a trade mark is filed without first checking the Register for any possible obstacles to registration. Further costs will be incurred in having to overcome an objection from the Trade Marks Office or another party, or having to file an application for a new trade mark.

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Trade mark filing and application procedure

An application to register a trade mark is filed with the Australian Trade Marks Office at IP Australia. In order to proceed with filing a new trade mark application, the following details are required:

the applicant's full name and address details;
details of the trade mark or a clear representation of the device or logo;
the specification of goods and/or services; and
details of any priority claim if based on a foreign trade mark application.

Trade mark applications are examined approximately three to four months after lodgment. If an objection is raised by an examiner, for example a descriptiveness objection or the citation of a prior trade mark entry, a period of 15 months is granted to allow the application to be placed in order for acceptance. If all objections can be overcome, the application will proceed to acceptance and is advertised in the Official Journal of Trade Marks for opposition purposes. The opposition period is for three months for third parties to file a notice of opposition to the registration of the mark. If no opposition is filed, the application will proceed to registration upon payment of a fee.

A trade mark is registered for a period of 10 years, which is renewable for additional 10-year periods upon payment of the requisite fees.

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Trade mark use

It is important that the trade mark symbols 'TM' and ® are utilised correctly by trade mark proprietors.

The 'TM' symbol can be used alongside a trade mark irrespective of whether it is registered or unregistered. The 'TM' symbol indicates to others that the trade mark is used as a trade mark by the proprietor or authorised users in respect of the goods or services to which it is applied.

The ® symbol indicates that the trade mark is a registered trade mark and should only be placed alongside a trade mark that is formally registered in the country in which the trade mark is in use. It is an offence to falsely represent that a trade mark is registered.

It should be noted that five years after a trade mark application has been filed, a trade mark that has been registered for a continuous period of at least three years and which has not been used during this period in respect of all or some of the goods and services for which it is registered, will become vulnerable to a removal or partial removal for non-use upon the application by another party.

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Seek advice

Sound commercial strategies should not only involve seeking patent protection for biotechnology innovation, but should also include adopting strong branding for the commercial embodiments of any innovation. The trade mark selection process should be initiated way before any potential commercial launch or exploitation.

Allens Arthur Robinson Patent & Trade Mark Attorneys offers a comprehensive trade mark protection service in addition to providing a strategic and holistic view of where branding can fit into the overall protection and commercialisation of biotechnology innovation.

For further information, please contact Dr Trevor Davies on +612 9230 4007

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Company news

In brief: Regular news from the biotech industry.

Crohn's disease in children gene identified
Giaconda's anti-MAP treatment for Crohn's disease shows high remission rates
GSK in US$1.5 billion alliance with Targacept
Merck to buy NovaCardia
Peplin announce positive pre-cancerous skin lesion study results
Roche CEO to step down in March 2008

Crohn's disease in children gene identified

July 18 – Paediatrics researchers from the Children's Hospital of Philadelphia and the University of Pennsylvania have identified a gene variant that increases a child's risk of Crohn's disease. The research supports previous results by German researchers who found that the same gene variant was associated with the adult form of Crohn's disease. As there are different types of Crohn's disease, classifying types by genetic profiles may help with the selection of the most appropriate treatments for each patient. The study found that 64 per cent of children with Crohn's disease had a specific variant of the gene, ATG16L1, compared with 52 per cent of healthy children. Those that have the variant were 62 per cent more likely to have Crohn's disease than children with the more common variant.

[Source: http://www.prnewswire.com/]

Giaconda's anti-MAP treatment for Crohn's disease shows high remission rates

18 July – Australian biotech Giaconda announced that the results of the first large-scale clinical study using Giaconda's anti-MAP therapy for Crohn's disease represent some of the highest remission rates ever published for Crohn's disease. Giaconda's therapy, known as Myoconda, targets the MAP bacterium, which is the lead candidate as an infectious cause of Crohn's disease. Giaconda's interpretation of the results of the two-year study is that the anti-MAP therapy provided a more effective treatment with a more favourable side-effect profile than current conventional therapies. The current indication being sought for Myoconda is to specifically treat Crohn's disease patients infected with the MAP bacterium.