Key takeaways from this Pharma forum 2021 session include:
-Brands play an important role in the pharmaceutical sector – not just in protecting names and logos, but also potentially in protecting the shape of products and their packaging, colours and other non-traditional features of products. Given that a trade mark registration potentially last indefinitely, the advantages of securing such protection for these sorts of features are obvious. However, doing this is not straightforward. For example, signs consisting exclusively of shapes or other characteristics of products are not registrable if they are necessary to perform a technical function. Nevertheless, a number of non-traditional trade marks have been accepted for registration, including the three-dimensional shape of various tablets and capsules, some highly unusual asthma inhaler shapes, and various distinctive perfume bottle shapes.
-Brexit has had a huge impact on EU trade marks and EU designs as these rights no longer cover the UK. The UK government agreed to separately protect these rights in the UK with the creation of new national trade marks and designs, comparable to the equivalent EU rights. However, new UK rights were not created where an application for the EU right was only pending at the end of the Brexit transition period. If a UK right is required in this circumstance, an application needs to be made directly to the UK IP Office. If that application is filed by 30 September this year, the UK right can claim the same priority/filing date as the corresponding EU right. While this “splitting up” of EU rights into separate UK rights seems relatively straightforward, various consequences flow from it. Specialist advice should be sought.
-Brexit also has an impact on the customs enforcement of IP rights. IP owners will need to remember to refile any applications for action (AFAs) designating the UK (where filed via another EU27 Member State’s customs office) or designating any EU27 Member State (where filed via UK customs). Pending this refiling, the relevant customs office will not be able to take enforcement action on the behalf of the IP owner.
-The UK government is consulting on a new exhaustion of rights regime for the UK. This is especially relevant to the pharmaceutical industry since pharmaceutical products are often parallel imported to and from the UK and third countries. The consultation closes on 31 August 2021.