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    22/07/2011 - France could effectively ban trademark enforcement against copycat generics

    French legislators are considering a new law that would effectively prohibit drugs manufacturers from enforcing their trademark rights in a tablet once the relevant patent has expired.

    Commentators have said that this proposal could “paralyse” the benefits of trademark protection not only for French rights, but also Community trademarks (CTMs) and designs. Courtesy of an unofficial translation at the MARQUES Class 46 blog, the proposed Article L5121-10-3 of the Public Health Code states :

    The owner of IP rights protecting the appearance and the texture of oral pharmaceutical forms of a reference product within the meaning of Article L5121-1 may not prohibit the oral pharmaceutical forms of a generic drug substitutable to this product under Article L5125-23, from showing a similar or identical texture and appearance.

    Frédéric Glaize, an associate at Cabinet Plasseraud, explains the thinking behind the proposal. “The motivation for such reform,” Glaize says, “is to favour generic medication and also to avoid patients... being mistaken when taking their medicine.” He add : “In other words, the expiration of a patent covering a drug will paralyse the effects of valid registrations of trademarks and designs that might also protect the appearance of such drug.”

    Other practitioners have drilled down further into the wording of the proposal to find that it appears to allow not only for the sale of generics with confusingly similar marks, but also the manufacture of such drugs. “The owner of one of those rights cannot use them to prevent the ‘existence’ of a generic product with an identical or similar appearance or texture,” notes Richard Milchior, partner at Granrut Avocats. “This wording is strange, but can be interpreted as meaning that manufacturing cannot be prohibited.” He adds : “The idea is also to avoid the use of IP rights to prevent commercialisation, but I will say that this is less clear since other parties do the commercialisation. This is obviously a limitation of the right of trademark owners and it concerns French marks as well as international marks covering France.”

    It is not the first time that legislators have tried to enact such a law. In 2009, such a move was blocked by the Constitutional Court for being included irrelevantly in a different bill. The new proposal is included in the Public Health Code, but uses exactly the same language as the previous attempt.

    Source : World Trademark Review