Trademark

India yet to notify a list of ‘International Non-Proprietary Names’


In a reply to a recent RTI application, the Trade Marks Registry has informed us that it is yet to notify a list of ‘International Non-Proprietary Names’ (INNs) under S. 13 of Trade Marks Act, 1999. 

(Image from here)
Section 13 of the Trade Marks Act, 1999 prohibits the registration of names of chemical elements or INNs which have been declared by the World Health Organization (WHO) and notified by the Registrar of Trade Marks. 
INNs are particularly relevant in the field of pharmaceutical trademarks. In most instances INNs refer to the generic name of a pharmaceutical drug. However INNs can also refer to the common ‘functional group’ or ‘active ingredient’ of a particular class of pharmaceutical drugs. The website of the WHO describes the relevance of INNs as follows: 
The INN system as it exists today was initiated in 1950 by a World Health Assembly resolution WHA3.11 and began operating in 1953, when the first list of International Nonproprietary Names for pharmaceutical substances was published. The cumulative list of INN now stands at some 7000 names designated since that time, and this number is growing every year by some 120-150 new INN. 

Since its inception, the aim of the INN system has been to provide health professionals with a unique and universally available designated name to identify each pharmaceutical substance. The existence of an international nomenclature for pharmaceutical substances, in the form of INN, is important for the clear identification, safe prescription and dispensing of medicines to patients, and for communication and exchange of information among health professionals and scientists worldwide. 

As unique names, INN have to be distinctive in sound and spelling, and should not be liable to confusion with other names in common use. To make INN universally available they are formally placed by WHO in the public domain, hence their designation as “nonproprietary”. They can be used without any restriction whatsoever to identify pharmaceutical substances. 

Another important feature of the INN system is that the names of pharmacologically-related substances demonstrate their relationship by using a common “stem”. By the use of common stems the medical practitioner, the pharmacist, or anyone dealing with pharmaceutical products can recognize that the substance belongs to a group of substances having similar pharmacological activity.” 

Notifying a list of INNs is particularly relevant in India given the sheer volume of litigation in the segment of pharmaceutical trademarks. According to the last annual report of the IPO, pharmaceutical trademarks account for 15% of all trademark registrations, making this class of trademarks the single largest category of trademarks. 

Hopefully, the notification of a list of INNs should help in improving the quality of pharmaceutical trademarks and hopefully lead to a reduction in the volume of trademark litigation clogging the judicial system. For those of you interested in reading more on this please do read this study by K.M. Gopakumar on the use of INNs in India.

Prashant Reddy

Prashant Reddy

T. Prashant Reddy graduated from the National Law School of India University, Bangalore, with a B.A.LLB (Hons.) degree in 2008. He later graduated with a LLM degree (Law, Science & Technology) from the Stanford Law School in 2013. Prashant has worked with law firms in Delhi and in academia in India and Singapore. He is also co-author of the book Create, Copy, Disrupt: India's Intellectual Property Dilemmas (OUP).

4 comments.

  1. AvatarAnonymous

    Keep it up. These kinds of informations are really required. I have noted that you keep on working on the grey areas and keep the readers informed on the developments (action and inactions) of the TM Office.

    You are talking about the inactions on the part of the TM Office. You may know that there was an amendment in the TM Rules whereby the Registrar has been authorized/empowered to issue a duplicate/additional copy of the Registration certificate to the applicant/registered proprietor, in case a there is a complaint of non receipt of the registration certificate without the payment of the further fee (like one can get the duplicate copy of the certificate of registration by filing an application in form TM-59 with fee of Rs500/-). You would be surprised to know that even after the passing of the period of more than 19 months from the date of such an amendment (20/5/2010), the software module of the TMR is yet to be changed to include this kind of the thing so that the Registrar can issue the Registration Certificate without the payment of fee. Then there is a condition that the Registrar cannot issue such certificate (as stated above without the payment of the further fee) where the request is made after the expiry of the time limit for renewal of registration and restoration of the registered trade mark. There would be many requests which though were made in time but on account of inaction on the part of TMR, (of not being able to issue the certification as stated above) , those requests become redundant.

    Not a single such request has been complied with by the RTM. If such is the position then why amend the law at all?

    Secondly the said amendment itself is confusing. It says that “no such duplicate or copy of certification of registration shall be issued where such request is received after the expire of the time limit for renewal of registration and restoration of the registered trade mark”. The question arises whether the RTM is empowered to issue the certification till the period of the registration (of ten years from the date of original application) or till the period of restoration (within one year after the original period of 10 years of the registration).

    I would request you to kindly find out by way of RTI application or otherwise as to how many persons have filed such requests and how many have been issued with the required certification.

    In fact CG was told about the tearing/burning of many (in thousands) registration certificates by Mumbai staff which has created cious and that the people should not suffer. Perhaps to cope with the same the RTM was empowered to issue the certification. BUT I AGAIN SAY, IF THE MODULE HAS NOT BEEN UPDATED Y WHICH THE REGISTRAR CAN ISSUE THE CERTIFICATION WHAT IS THE PURPOSE OF AMENDING TH ELAW?
    Best regards,

    Reply
  2. AvatarAnonymous

    Dear ABC,
    It is not the website who is criticizing the IPO Office. It is the readers who post their comments. They express resentment on account of the practical difficulties being faced by them. It seems that either you are the employee of IPO or that you get your works done in your way. I have not come to know of any person who is satisfied in the normal working of the IPO. You have to shake the heads of the IPO officials only then they would work. They do not take up the letters written by public. The letter would be digitized and that is it. The IPO Officials would boast about the digitization. I ask what worth it is if you do not have to go through the letter you have digitized. One may keep on filing letters and reminders, but it does not affect the IPO officials. Earlier they used to just keep the letters with them and seldom used to be put in the files physically. Now the only change is that they are digitized. Of course the public would be in a sense benefited to the extent of proving the filing of letters. Hence you please shut up and tell the officials to do work instead.

    Reply
  3. AvatarPushp

    I Agree with digitalization they will forced to take quick decisions. I would recommend that IPO should start forum like features to address RTI or Public Grievance. they might require digital signatures to verify registrations.

    Reply

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