by Karimullah Adeni

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Only the last time, we were talking about the pharmaceutical industry using the health ministry to frustrate rivals with registered trademarks. The ministry, apart from issuing licenses for manufacturing of drugs, was also registering brand names, something that was not its business.

The trademark owners, if they had not applied for a drug manufacturing license, were left high and dry, running pillar to post for remedy.

But now a landmark judgment has come.

The case I am referring to is Getz Pharma v Shaheen Pharma & ministry of health in the High Court of Sindh. Justice Musheer Alam was the judge. In his landmark judgment, the learned judge has written, “it may be observed that, the board is conferred jurisdiction to cheek counterfeit drugs as defined under section 3 (f) of the drug act 1976. it is also in the public interest that no two drugs are registered under the same name. It is therefore, desirable that the registration board, before according registration of any drug under the drug act, 1976 may ensure that , name of the drug applied for is not registered with it earlier , the name applied for is not being used as a Trademark, Copyright or Patent and Design. To avoid conflicting claims, board may obtain declaration from the applicant of drug to the effect ‘that name of the drug applied for is neither registered nor registration is pending either with the trademark or copy right or under the patent and design act 1911’. Such declaration would surely obviate rival confrontation so also deter multiplicity of litigation.” By board the judge means the board formed by the health ministry to register the drugs that various pharmaceutical companies intend to manufacture in Pakistan. The judgment makes it quit clear now that the applicant must submit a declaration that there would not be a trademark violation if the applicant‘s drug is registered with the ministry.

This has been a great problem .registration of drugs was, no doubt, the job of the board, but the registration of the brand name, and thus trademark registry.

Trademarks are registered for all products, and while a drug needs health ministry’s approval before coming to the market, protection of the name of the drug was something that should have been the job of the trademarks office.

Health ministry was offering this “one-window opportunity” to the Pharma sector without taking any responsibility of this action. The registration document would say that the companies were allowed to use those names unless some other claim comes up.

Now, what did a license mean when it said, unless some other claim comes up? Aren’t the authorities supposed to protect the licensee against other claims? The trademarks registry does that. Once it grants a trademark, it stands by it. Any counter claim means go to court and the registry is happy to be a party favor of its earlier decision.

The health ministry, however, was a different story. If after a number of years, somebody pointed out that the name approved by the ministry was already a registered trademark of another company, the ministry was willing to “correct” itself.

This meant after spending millions of rupees in a brand name, since the health ministry had approved the name, the risk of loosing the name still remained there.

No more, thanks to this judgment. Now sanity would return to the pharma business where litigation had become the name of the game.

As they say, the best fights are won before the fighting starts. The court just prevented some real bad ones.

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