Articles, Case Notes, Presentations and In-depth Discussion of IP and Technology Law.
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How the Trade Secrets Directive affects Inventors
Since all patented inventions start out as trade secrets and many other inventions remain that way for various reasons, the implementation of Directive 2016/943 ("the Trade Secrets Directive") is an important day for inventors in the UK and throughout the rest of the EU. More
An exception to the rule that a trade mark registration cannot be challenged for non-use in the first 5 years after registration is where the application to register the trade mark was made in "bad faith". The legislative mechanism is provided by s.47 (1) of the Trade Marks Act 1994:
"The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)."
Subsection (6) of s.3 provides:
"A trade mark shall not be registered if or to the extent that the application is made in bad faith."
What the Appeal was about
The pharmaceutical company Eli Lilly and Co ("Lilly") has developed a drug called pemetrexed which it markets under the brand name Alimta for the treatment of various types of cancer. Used on its own, pemetrexed has unpleasant side effects that can sometimes be fatal but these can be avoided when it is administered as a compound called pemetrexed disodium in combination with vitamin B12.
The use of pemetrexed disodium in the manufacture of a medicament for use in combination with vitamin B12 (and, optionally, folic acid) for the treatment of cancer is monopolized in the United Kingdom, France, Italy, Spain and a number of other European countries by European patent number No 1 313 508. There are also corresponding patents for the same invention in many other countries around the world.