Monday, May 9, 2011
Pharma battles and fights with the TMO
Minrad a US pharma company, found its TERRELL mark rejected by Indonesia's TM Office for conflict with Merck KGaA's TERIL mark. The news reports don't say if Merck filed an opposition. Minrad appealed to the Trademarks Appeals Commission but the appeal was upheld (IP Komodo notes that TMAC is staffed by examiners! That would be like IP Komodo being asked to look after goats for the farmers...)
Minrad are understandably upset since one of their most well known researchers is one Dr Ross Terrell. They appealed to the courts. It is unclear if the TMO really believe this is similar or, having decided an opposition in favour of Merck they must stand by their decision. The case is going to hinge on similarity of the mark and the precise pharma goods.
IP Komodo worries that the IP Office tends to take such attacks personally. For years they used to act as defendant in inter partes proceedings, and would always defend regardless of the merits. In many such cases, they rigidly take the same approach, and IP holders are left having to sue them as defendant.