Healthcare and Life Sciences Team of the Year: Sandoz International
It has been a busy year for the Sandoz International team, which handles the trademark-related work of Sandoz and its affiliates on a worldwide basis. In addition to typical registration work, David Lossignol, global head of trademarks, notes that: “last year, we spent a significant amount of time in streamlining our prosecution workflow. For this purpose, we collaborated with the other divisions within the Novartis Group and with a law firm we have partnered with for several years, which is handling some of our docketing and prosecution steps.”
For those in the pharmaceutical industry, canny prosecution is key, as companies are wrestling with myriad sector-specific naming rules and regulations. “The quality and timing of the availability searches we conduct are key elements”, explains Lossignol. “The generic business is fast track and involves late-stage product opportunities from a licensing perspective – we therefore need to anticipate trademark needs as much as possible to ensure that a few potential names are ready during the marketing authorisation submission process at the latest. The searches we conduct are going far beyond identification of prior trademark rights, as we need to make sure that a trademark can be accepted by the local or regional health authorities and be used on the market.”
Beyond prosecution work, the team is also responsible for brand protection. “With regard to enforcement, what kept us up at night was the defence of a worldwide colour/trade dress-related conflict covering more than 10 countries”, reveals Lossignol. “We also initiated a significant number of actions in Commonwealth of Independent States countries to protect our trade dresses and trademarks against local infringers.”
One enforcement strategy adopted by the team is to anticipate infringers’ actions and adapt accordingly. As an example, Lossignol explains that “in some countries, we have seen that infringing products are sold by one physical (as opposed to online) distributor for a few days or months, which is then liquidated, and the goods subsequently sold by another one afterwards. So we need to try to get to the source of the infringement to the extent we can identify it”. In terms of evolution, he continues: “we are also thinking twice before any enforcement initiative and we are taking into account more and more the potential bad reputation that an enforcement may lead to in case it is not properly handled or justified (eg, unnecessary, aggressive cease and desist letters).” However, he reiterates that “as patients are at the centre of all we do, we ensure that we prioritise actions which are the most impactful for patients”.
Considering what factors contribute to an in-house team’s success in enforcing its company’s trademarks, Lossignol states: “A key element is to be well prepared and ensuring that all the facts are known to avoid bad surprises and making sure that there is a streamlined and efficient collaboration between the local legal team (if any), the local business, our outside counsel and our trademark team.” He adds: “Having outside counsel who are real business partners is also an essential component of a successful enforcement. We have successfully defended or won some litigations in some countries partly thanks to the disconnection between the other party and their outside counsel.”
The eight-strong team (one department head, three attorneys, one specialist and three paralegals) is based in Holzkirchen, Germany and is tasked with overseeing enforcement activities and managing a portfolio that is approaching 28,000 trademarks. When it comes to staying on top of all branding challenges, Lossignol acknowledges that a lot of decisions are made “as a team after having heard many opinions from team members, as we encourage diverging and creative feedback”. He concludes: “We try to take smart risks and be business oriented, not only by trying to understand the business, but by functioning as connector between the different business stakeholders. Ultimately, we are trying to function as businesspeople with a law background.”
Johnson & Johnson