In two recent (non-precedential) decisions of the U.S. Trademark Trial and Appeal Board (TTAB), the TTAB concluded (1) that a domain name consisting of the INN prasterone plus .org was generic for providing a website featuring scientific and clinical research information about prasterone and therefore an application to register prasterone.org for such services was properly refused (In re Health Sci. Funding, LLC, 2012 TTAB LEXIS 367 (TTAB Sept. 19, 2012)) and (2) that dietary supplements and energy drinks are related goods (In re Dub Nutrition, LLC, 2012 TTAB LEXIS 397 (TTAB Oct. 3, 2012)). Also, a new drug naming policy of the United States Pharmacopeia and National Formulary (USP-NF) will go into effect 1 May, 2013. The USP-NF is responsible for the naming policies for particular drug monographs of FDA-approved drugs. For example, the USP-NF policy calls for drug product names to consist of [DRUG] [ROUTE OF ADMINISTRATION] [DOSAGE FORM], aerosol products to consist of [DRUG] [ROUTE OF ADMINISTRATION] Aerosol, etc. In general, this USP-NF compliant name will include the INN or established name of the active ingredient, but over time some inconsistencies developed between USP-NF names and the final established name of an approved product. The USP-NF’s new policy is intended to bring more consistency to this naming process and help avoid confusion among healthcare workers and patients. This will not affect the proprietary name approval process, which remains solely with the FDA. More information on the USP-NF naming policy is available at www.usp.org. Here we are again at that time of year in the Northern hemisphere when Brussels sprouts and parsnips figure heavily on the kitchen table, to the delight of some and to the horror of others. This difference in reaction in our household is driven by the generation gap and not by cultural differences; to my relief one can now buy parsnips in French markets and I am no longer obliged to run a non-declared vegetable import business! Children’s taste buds evolve; we all know that and often have personal memories of the day when we actually enjoyed a particular food for the first time. You can of course also go off some food as my experience with snails, that ultimate French delicacy, shows. The moment was entirely psychological and not one of “lost in translation”. Some years ago, whilst I was enjoying my escargots dripping in butter and garlic, the person sitting opposite me asked in pigeon English “do you like snails?” Whereupon one got stuck in my throat and I have never been able to eat them since! For schoolchildren here in France, there are no such things as snails or frogs’ legs on the lunchtime menu but nevertheless, to a Brit who enjoyed the joys of the tuck shop at school, there are daily, challenging gustative moments. A regular state school lunch menu here has four courses, where combinations of shredded beetroot or other raw vegetables, broccoli purée and international dishes such as moussaka are often proposed. Given that on average 90% of all schoolchildren between the ages of 3 and 15 eat in their canteens in France and lunch boxes are generally not permitted for health and safety reasons, you can begin to imagine how important this market is to food producers and caterers alike. Special dietician advisors are nominated in each school academy and great care is spent on developing balanced meals on a 6 week rota. Whilst one can applaud these initiatives to teach children about food, the results are sometimes contradictory. Hoards of starving pupils rush out of school to devour mountains of patisseries, biscuits and other high-sugar content delights and the sale of cakes in front of the school one night a week raises large amounts of cash for school projects. The lone Mum who arrives with a box of chopped fruit is to be applauded but, in my experience, is fighting a losing battle. Whatsmore, it would be just as appropriate, in my opinion, to tackle the vast amount of waste in school canteens and for both parents and the educational community to spend more time and resources educating children in the notions of world food economics and good food husbandry. The future health of the world’s population certainly depends on a more balanced distribution of the food we produce and eat across the globe. Meanwhile, it’s back to the drawing board for the week’s menus at home which of course, must vary from the ones offered in school! Whether your menu for Christmas Day includes sprouts or not, I wish you all an enjoyable festive season and a happy, healthy New Year. Vanessa TM TM TM TM TM TM Pharmaceutical Trade Marks Group Pharmaceutical Trade Marks Group Dec 2012 Editorial: Food, glorious food US Law Update James Thomas, Thomas Trademarks and Copyright Legal Services, North Carolina
Transcript
In two recent (non-precedential) decisionsof the U.S. Trademark Trial and AppealBoard (TTAB), the TTAB concluded (1)that a domain name consisting of the INNprasterone plus .org was generic forproviding a website featuring scientific andclinical research information aboutprasterone and therefore an application toregister prasterone.org for such serviceswas properly refused (In re Health Sci.Funding, LLC, 2012 TTAB LEXIS 367(TTAB Sept. 19, 2012)) and (2) thatdietary supplements and energy drinks arerelated goods (In re Dub Nutrition, LLC,
2012 TTAB LEXIS 397 (TTAB Oct. 3,2012)).Also, a new drug naming policy of theUnited States Pharmacopeia and NationalFormulary (USP-NF) will go into effect 1May, 2013. The USP-NF is responsiblefor the naming policies for particular drugmonographs of FDA-approved drugs. Forexample, the USP-NF policy calls for drugproduct names to consist of [DRUG][ROUTE OF ADMINISTRATION][DOSAGE FORM], aerosol products toconsist of [DRUG] [ROUTE OFADMINISTRATION] Aerosol, etc. In
general, this USP-NF compliant name willinclude the INN or established name ofthe active ingredient, but over time someinconsistencies developed betweenUSP-NF names and the final establishedname of an approved product.The USP-NF’s new policy is intended tobring more consistency to this namingprocess and help avoid confusion amonghealthcare workers and patients. This willnot affect the proprietary name approvalprocess, which remains solely with theFDA. More information on the USP-NFnaming policy is available at www.usp.org.
Here we are again at that time of year inthe Northern hemisphere when Brusselssprouts and parsnips figure heavily on thekitchen table, to the delight of some andto the horror of others. This differencein reaction in our household is driven bythe generation gap and not by cultural
differences; to my relief one can now buyparsnips in French markets and I am no longer obliged to run anon-declared vegetable import business!
Children’s taste buds evolve; we all know that and often havepersonal memories of the day when we actually enjoyed aparticular food for the first time. You can of course also go offsome food as my experience with snails, that ultimate Frenchdelicacy, shows. The moment was entirely psychological and notone of “lost in translation”. Some years ago, whilst I wasenjoying my escargots dripping in butter and garlic, the personsitting opposite me asked in pigeon English “do you like snails?”Whereupon one got stuck in my throat and I have never beenable to eat them since!
For schoolchildren here in France, there are no such things assnails or frogs’ legs on the lunchtime menu but nevertheless, to aBrit who enjoyed the joys of the tuck shop at school, there aredaily, challenging gustative moments. A regular state schoollunch menu here has four courses, where combinations ofshredded beetroot or other raw vegetables, broccoli purée andinternational dishes such as moussaka are often proposed.
Given that on average 90% of all schoolchildren between the
ages of 3 and 15 eat in their canteens in France and lunch boxesare generally not permitted for health and safety reasons, youcan begin to imagine how important this market is to foodproducers and caterers alike. Special dietician advisors arenominated in each school academy and great care is spent ondeveloping balanced meals on a 6 week rota.
Whilst one can applaud these initiatives to teach children aboutfood, the results are sometimes contradictory. Hoards ofstarving pupils rush out of school to devour mountains ofpatisseries, biscuits and other high-sugar content delights and thesale of cakes in front of the school one night a week raises largeamounts of cash for school projects. The lone Mum who arriveswith a box of chopped fruit is to be applauded but, in myexperience, is fighting a losing battle.
Whatsmore, it would be just as appropriate, in my opinion, totackle the vast amount of waste in school canteens and for bothparents and the educational community to spend more time andresources educating children in the notions of world foodeconomics and good food husbandry. The future health of theworld’s population certainly depends on a more balanceddistribution of the food we produce and eat across the globe.
Meanwhile, it’s back to the drawing board for the week’s menusat home which of course, must vary from the ones offered inschool! Whether your menu for Christmas Day includes sproutsor not, I wish you all an enjoyable festive season and a happy,healthy New Year.
VVaanneessssaa
TM
TM
TM
TM
TM
TM
PharmaceuticalTrade Marks GroupPharmaceuticalTrade Marks Group Dec 2012
Editorial: Food, glorious food
US Law UpdateJames Thomas, Thomas Trademarks and Copyright Legal Services, North Carolina
Members News
2
New MembersWe are delighted to welcome thefollowing new members to the Group:
Laura Pedemonte of Barzano & ZanardoMilano S.p.A., Milan, [email protected]
Rosalia Salvia Lopez of Isdin S.A.,Barcelona, Spain [email protected]
Pavel Gorokhov, of Baker & McKenzie –CIS Limited, Moscow, Russia "[email protected]
Heidi Gorenstein Nigri of Luiz Leonardos& Cia – Intellectual Property, Rio deJaneiro, Brazil [email protected]
Lucila Lodola de San Martin of Obligado &Cia Ltda, Buenos Aires, [email protected]
Goran Marjanovic of Zivko Mijatovic andPartners (ZMP), Zagreb, [email protected]
Caroline Casseli of Casseli Law Firm,Asuncion, Paraguay [email protected]
Marissa Lasso de la Vega F., of AlfaroFerrer & Ramiez, Panama City, [email protected]
Clemence le Cointe of Dennemeyer &Associates S.A., Munich, [email protected]
Words from theChair
With the end of 2012 fastapproaching, I am delighted to saya few words in my capacity as thenew Chair of PTMG.
Firstly, I want to say how pleased Iam to be the Chair of such awonderful organisation and I amlooking forward to getting toknow as many of you as possiblein the future.
I must again pay tribute toSue Evans and thank her for hersuperb leadership over the pastyears. Sue made the transition ofresponsibility very smooth andeasy and has been so kind andhelpful to me. My personal thanksalso to all the PTMG Committeemembers without whom PTMGwould not be this greatorganisation.
It was a great pleasure to host myfirst PTMG conference as Chair inBarcelona and I enjoyed meetingmany of you then. I am delightedthat we were able to introducethe first Founder’s Lecture;congratulations again toIsabelle Dini for giving such aninteresting presentation andspecial thanks to Derek Rossitterfor attending the meeting andpresenting Isabelle with theFounder’s Lecture gifts andcertificate. It was an honour forme to have Derek in the room forthe first Conference I waschairing.
I am looking forward to seeingmany of you at our nextconference in Hamburg in March,and in the meantime, I wish youand yours a Merry Christmas andsend you all my very best wishesfor 2013.
Moves and MergersWolfgang May retired from Procter &Gamble earlier this year and may now befound at May & Pursch-MayRechtsanwälte. His e-mail address [email protected].
Following the acquisition of Nycomed byTakeda, Wolfgang Feiler has moved officesand can now be found at TakedaPharmaceuticals International GmbH inZurich, Switzerland. His e-mail address [email protected].
Elka Stegeman has left NovagraafNederland B.V. to join Arnold Siedsma inEnschede, The Netherlands. Elka can becontacted at [email protected]
Kathrine Kjendlie has left NycomedNorway to join Onsagers AS in Oslo,Norway. She can be contacted [email protected].
Please remember to let us know of anychanges to your contact details. You cannotify me either via the PTMG websitewww.ptmg.org or directly [email protected] or by writing to me atTillingbourne House, 115 Gregories Road,Beaconsfield, Bucks, HP9 1HZ
Lesley Edwards
Australia
Earlier this year the Therapeutic GoodsAdministration (TGA) issued aconsultation paper on medicine andlabelling packaging reform in Australia.The 110 submissions received in responseto this review have now been analysedand the TGA has announced the nextsteps in its review.
The TGA has announced strong supportfor changes regarding: active ingredientprominence; standardised medicineinformation presentation; dispensing labelspace; and the creation of a committee toprovide advice to the TGA on labellingand packaging issues. However, lessconsensus exists in the remaining areas,including: look-alike, sound-alike names;look-alike packaging; look-alike branding;pack inserts; small containers; and blisterstrips. Significant opposition to some areasof proposed reform was apparent. TheTGA will now undertake furtherdiscussions with stakeholders, includingconsideration of alternative approaches toachieve greater consensus to the reformsbeing considered.
Two polarising issues were theprominence of active ingredient namesand use of umbrella branding. Significantly,after consideration of the submissions, theTGA has formed the view that a single setof requirements for medicines labelling isnot appropriate for all classes ofmedicines. Therefore, it is now proposedthat labelling requirements will be specificto the class of medicine, divided into: 1.)prescription; 2.) over the counter (non-prescription registered); and 3.) listed(complementary). Labelling requirementswill be developed in consideration of thehealthcare professional interactionassociated with each class of medicine.That is, requirements will vary forprescription only medicine whencompared with a product self-selected in apharmacy or supermarket.
The TGA will first focus on labellingrequirements for registered prescriptionand non-prescription medicines. Productsat the therapeutic and consumer productsinterface, such as sunscreens, have beenhighlighted as being a particular focus. Thegoal being to achieve greater consensusacross the proposed changes, after whichindependent consumer testing is plannedfor early 2013, ahead of changes to theregulations.
The new official patent and trademarkfees were introduced by the Russiangovernment’s order No. 781 of 15September, 2011 and came into force lastAugust after Russia formally joined theWorld Trade Organization (WTO).
As prescribed by the WTO, the Russiangovernment’s order introduced equal feesfor both domestic and foreign applicants.
The official fees for trade mark matterswere the same for both domestic andforeign applicants during the last 7 or 8years. Now the official fees for trade markprosecution have increased byapproximately 30%.
The order stipulates a 15% discount forelectronic filing, i.e. a EUR 3-10 (USD 4-13) discount, depending on the type of theofficial fee and a 50% discount for theofficial fees for small business applicants.
RU MARKS, a company that specializes intrade mark registration in Russia,announced on its website that Russia’sPTO recently registered the first scenttrade mark in Russia.
In Spring 2012 this year Russian perfumemaker Natalia Kolyago succeeded inobtaining trade mark rights for a leathertag with a strong leather smell.
Kolyago’s perfume, which will smell likethe registered trade mark, is expected toappear on the Russian market by the endof this calendar year.
PETOSEVIC
Saudi Arabia
At a recent seminar hosted by the RiyadhChamber of Commerce relating to theissue of fake pharmaceuticals, the CEO ofthe Saudi Arabian Food and DrugAuthority announced new draft legislationthat strengthens the penalties that can beawarded against those engaged incounterfeit drug trade. Of note is that, inaddition to the existing penalty ofimprisonment, the possible fine isproposed to be increased to SAR5million(approx. USD $1.36M). He further calledfor closer co-operation between theAuthority and private sector to fightcounterfeit pharmaceuticals and notedthat the proximity of Saudi Arabia to thefree trade zones in the United ArabEmirates causes the country to be a targetmarket for counterfeiters.
[Source: A l Riyadh Newspaper – 29November 2012]
It remains to be seen how or when theproposed legislation will be implementedand if the Courts will start to issue higherpenalties as a result.
Sara Holder, Rouse & Co. International
Ukraine
Yuridicheskaya Praktika, a Ukrainian legalnewspaper, reports that the WorldTrade Organization (WTO) will considerthe formal complaint Ukraine filed earlierthis year against the Australian law thatsets new requirements for the design ofcigarette packs.
The law, expected to enter into force on1 December, 2012 will make Australiathe first country in the world tointroduce plain cigarette packaging devoidof manufacturers’ logos.
According to the law, cigarettes will besold in standardized packets with brandnames written in a uniform font. Healthwarnings and graphic images of diseasescaused by smoking will cover at least 75percent of the front of the pack and atleast 90 percent of the back.
Ukraine is one of several countries thatfiled complaints against Australia arguingthat the logo-free cigarette packagingundermines trade mark owners’ rights.
PETOSEVIC
4
International Update
Hot off the pressChris McLeod
As we went to press, the Courtof Justice of the European Union’sjudgment in Case C-457/10 PAstraZeneca AB and AstraZenecaplc v European Commission wasissued, on 6 December 2012. Thisjudgment is some 40 pages long, soa full report will appear in the nextissue of Law Lore & Practice. Inthe meantime, as readers may beaware, the judgment relates toLOSEC products and allegationsof abuse of a dominant positionwith reference to third-partygeneric equivalents to LOSEC. Thisdecision is effectively anunsuccessful appeal against a fineof €60 million imposed by theCommission in 2005.
3
In April 2008, Isdin, SA applied toregister ZEBEXIR as a CommunityTrade Mark for goods in class 3,covering ‘bleaching preparations andother substances for laundry use;cleaning, polishing, scouring andabrasive preparations; (abrasivepreparations) soaps; perfumery,essential oils, cosmetics, hair lotions;dentifrices’ and in class 5 covering‘pharmaceutical and veterinarypreparations; sanitary preparations formedical purposes; dietetic substancesadapted for medical use, food forbabies; plasters, materials for dressings;material for stopping teeth, dentalwax; disinfectants; preparations fordestroying vermin; fungicides,herbicides’. Bial-Portela & Ca, SAopposed the application on the basisof Article 8(1)(b) of Regulation 40/94(now 207/2009), relying on itsCommunity Trade Mark registration ofZEBINIX dating from March 2005 andcovering identical goods in classes 3and 5.
Appeal
The Opposition Division rejected theopposition, finding no likelihood ofconfusion between the marks. TheOffice for the Harmonization of theInternal Market (OHIM)’s First Boardof Appeal also dismissed theopposition, finding that,notwithstanding some commonelements (in particular, the firstsyllable ‘ze’ and the first three letters),the visual and phonetic differencesbetween the marks were sufficient toeliminate a likelihood of confusion,even for identical goods. Bial-Portelaappealed to the General Court.
General Court decision
The General Court upheld Bial-Portela’s appeal and annulled theBoard of Appeal’s decision. It heldthat the Board of Appeal had beencorrect in finding that the respectivegoods were identical and that therelevant public, for the purposes ofassessing likelihood of confusion, wascomposed of the average EUconsumer, who was reasonably wellinformed and reasonably observantand circumspect. However, the Boardof Appeal had erred in its findings onthe similarity of the marks and thelikelihood of confusion.
Visual similarity
Assessing the visual similarity of themarks, the Court considered thatconsumers normally attach moreimportance to the first part of a word.It found that the visual differencesbetween the marks created by thecentral and end parts ‘inix’ and ‘exir’were not sufficient to cancel out theimpression of similarity created by thecommon first part ‘zeb’. Althoughthose end groups of letters weredifferent as regards the order of thevowels and consonants and the finalletter, both groups of letters containedan ‘i’ and ‘x’. Also, the common letter‘x’, which was visually striking,reinforced the similarity created bythe common first part of the twomarks, even though it was not in thesame position in each of the signs.Accordingly, when taken as a whole,the marks were visually similar to anaverage degree.
Phonetic and conceptual similarity
Assessing the phonetic similarity ofthe marks, the Court found that bothcomprised three syllables, the firstsyllable being identical and the secondsyllables ‘be’ and ‘bi’ being close insound. The Court found that the thirdsyllables ‘xir’ and ‘nix’ had thecommon letters ‘i’ and ‘x’, the secondof which had a clearly recognisablesound. Furthermore, the sounds ‘eks’in ZEBEXIR and ‘iks’ in ZEBINIX werecapable of attracting consumers’attention, and created a similarphonetic impression. Accordingly,the two marks had some degree ofphonetic similarity.
On the question of conceptualsimilarity, the Court upheld the Boardof Appeal’s finding that neither markhad any meaning in the relevantlanguages and that conceptualcomparison did not, therefore,influence the comparison of themarks.
Likelihood of confusion
The Court went on to assess whetherthe Board of Appeal’s errors in thefindings on similarity had detrimentallyinfluenced its decision on likelihood ofconfusion. The Court concluded thatit had. It found that the marks had anaverage degree of similarity,
particularly visually. Further, the goodsin class 3 and a large proportion ofthe goods in Class 5 (namely food forbabies, materials for dressings,disinfectants, preparations fordestroying vermin, fungicides andherbicides) designated by both markswere normally marketed on display insupermarkets and therefore chosen byconsumers after a visual examinationof their packaging. This meant that thevisual similarity of the marks wasespecially important. The Courtfound, therefore, that there was alikelihood of confusion.
From an external perspective, thedecision appears to be correct notonly because the marks bearsignificant similarity but also becausethe respective goods are identical.The case is particularly interestingbecause of the importance the Courtattached to the visual display of themarks on packaging of goods whenassessing likelihood of confusion.
Boehringer Ingelheim Pharma GMBH &Co KG (B) was the proprietor of aCommunity Trade Mark registration ofSPIRIVA, registered in June 1999 in Class 5for pharmaceutical preparations. In March2011, Johnson & Johnson (J) applied toregister ABIRIBA in Class 5 for humanpharmaceuticals. The application waspublished on 17 June 2011. B opposed onthe basis of section 5(2)(b) of the TradeMarks Act 1994 which prevents a markbeing registered where, because it issimilar to a mark the subject of an earliertrade mark registration and is to beregistered for identical or similar goods,there exists a likelihood of confusion onthe part of the public.
Proof of useAs B’s mark had been registered for morethan five years prior to the date of J’sapplication, The Trade Marks (Proof ofUse, etc) Regulations 2004 wereapplicable. These required B to prove that
European Union Case NotesLikelihood of confusion between ZEBINIX and ZEBEXIRGill Dennis and Chris McLeod, Squire Sanders (UK) LLP, London
5
SPIRIVA and ABIRIBAnot confusingly similarfor pharmaceuticals
Gill Dennis and Chris McLeod,Squire Sanders (UK) LLP, London
Continued on next page
it had put its mark to genuine use in theUK, in relation to the goods for which ithad been registered, during the five yearsending on the date of publication of J’sapplication (18 June 2006 to 17 June2011).
B filed evidence in the form of annualreports showing use of SPIRIVA in variousEU countries since 2002 and evidencingtotal sales of more than £5.6 billion euros.The Hearing Officer was satisfied that thisdemonstrated genuine use of SPIRIVA inthe UK during the relevant five yearperiod. The evidence also showed thatSPIRIVA was used for the treatment ofChronic Obstructive Pulmonary Disorder,an umbrella term for various respiratorydiseases. The Hearing Officer found thatthe average consumer would describeSPIRIVA as designating ‘pharmaceuticalpreparations all for use in the treatmentof respiratory diseases’ and that this was,therefore, the fair specification on thebasis of which to consider the matter.
Section 5(2)(b)In assessing the likelihood of confusion,the Hearing Officer adopted the global
approach advocated by case law andapplied the interdependency principle i.e. alesser degree of similarity between therespective trade marks may be offset by agreater degree of similarity between therespective goods (and vice versa).
The average consumers were found to bemedical professionals (with a high degreeof attention when prescribing) and thepublic (with a reasonable degree ofattention when purchasing) but the factthat marks are rarely recalled perfectlywas taken into account. The HearingOfficer found that the marks shared avery low degree of visual similarity(because the most important aspect ofeach was the beginning and this wascompletely different), a low degree ofaural similarity (pronounced SPY-REE-VAand ABBEY-REE-BER respectively) andwere conceptually neutral. It was felt thatB’s mark, as an invented word, had a highlevel of inherent distinctive character,which had been further enhanced by theextensive use made of it. The HearingOfficer also found B and J’s goods to beidentical (as ‘pharmaceutical preparationsall for use in the treatment of respiratorydiseases’ were included within the broader‘human pharmaceuticals’ category).
DecisionThe Hearing Officer found that theaverage consumer tended to regard thebeginning of a word as most important. Inthis case, the first two letters of SPIRIVAand ABIRIBA were different, as were theendings. The words were only sevenletters long in total. In the HearingOfficer’s view the similarities between themarks were ‘more than offset’ by thedifferences. Taking all of the above intoaccount, and considering the marks as awhole, the Hearing Officer had ‘nodifficulty in concluding’ that there was nolikelihood of confusion between themarks. B’s opposition failed despite itsmark being deemed to have acquiredenhanced distinctiveness.
From an external perspective, this decisionappears to be correct because the marksdo not appear to bear great similarity.However, it may be that there was acommercial reason behind the opposition.Interestingly, in 2010 Johnson & Johnsonregistered the same mark as a CTM forthe same goods with no opposition byBoehringer Ingelheim. As an item of trivia,Abiriba is also a town in south easternNigeria.
The Court of Justice of the EuropeanUnion had to deal with the reputation ofthe trade mark BOTOX in two connectedcases in May this year (Judgement of 10May 2012, Ref. C-100/11). The companiesHelena Rubinstein and L'Oréal had appliedfor the designations BOTOLIST andBOTOCYL, respectively, to be registeredas EU trade marks in 2002. The Office forHarmonization in the Internal Market(OHIM) had registered the marks forgoods of Class 3, in particular ’cosmetics‘.The U.S. company Allergan is theproprietor of a number of BOTOX trademarks, which are registered, among othergoods, for ’pharmaceutical preparationsfor the treatment of wrinkles‘. In 2005,Allergan applied for a declaration that theregistration of the disputed marksBOTOLIST and BOTOCYL was invalid.
The First Board of Appeal of OHIM aswell as the General Court of theEuropean Union found that – at least forthe UK – BOTOX had a reputation. Bothinstances observed that the commonsyllable ’BOT-‘, respectively ’BOTO–‘ doesnot refer to the botulinum toxin, theactive ingredient of the pharmaceuticalproduct sold by Allergan and thus is notdescriptive. Further, it was held that thereis no likelihood of confusion between thedisputed marks and the earlier mark
BOTOX, but the public would establish aconnection between those marks. Also, theyounger trade marks take advantage ofthe distinctive character and reputeacquired by BOTOX. The trade markswere annulled.
Now the Court of Justice has confirmedthis opinion, giving the followingclarification:
The evidence for the reputation of a trademark in only one Member State (here theUK) is a sufficient ground for refusal ofregistration.
Basically, only such pieces of evidence canbe taken into account which arepresented in the language of theproceedings, or which are accompanied bya translation into this language, whichAllergan failed to do in the present case.Still, the Court of Justice admitted thedocuments since it had been possible forHelena Rubinstein and L’Oréal to contestthe legal relevance of the foreign-languagedocuments, and they had thereforeobviously understood their meaning.
There does not need to be an actualdanger of confusion with the youngertrade mark. Instead it is sufficient that thepublic establishes a link between themarks and makes an association between
the two signs at issue (Art. 8(5)Community Trade Mark Regulation).
The proprietor of the earlier trade markis not obliged to provide any evidence forthe existence of an actual and presentdetriment to its trade mark. In fact, it issufficient to specify aspects from which itcan be concluded that there is a dangerthat the trade mark may be takenadvantage of or suffer detriment in thefuture, and that this danger is not only ahypothetical one.
CommentsThe costs of proving the reputation of atrade mark can be considerable, takinginto account the public surveys whichusually need to be conducted. However,the evidence can at least be restricted toone country.
Even if the Court of Justice has in thiscase considered evidence which was notfiled in the language of the proceedings tobe admissible, this exception should notbe relied upon. Evidence – at least therelevant passages - should be translatedinto the language of proceedings,otherwise the risk is that it will not beconsidered.
Enforcement of trade marks with Reputation (BOTOX)MMaarrggrreett KKnniitttteerr LLLL ..MM..,, SSKKWW SS cchhwwaarrzz ,, GGeerrmm aannyy
65
Continued from previous page
The Malaysian Copyright Act 1987(Act) was recently amended by theCopyright (Amendment) Act 2012 to,inter alia, facilitate Malaysia in fulfillingthe requirements for accession to theWIPO Copyright Treaty (WCT) andWIPO Phonograms and PerformancesTreaty (WPPT). The amendmentscame into force on 1 March 2012.
This update will provide a summary ofsome of the amendments provided bythe Copyright (Amendment) Act2012.
A Voluntary Notification of CopyrightSystem has been introduced. TheVoluntary Notification mechanism isgoverned by the Copyright (VoluntaryNotification) Regulations 2012 whichwas gazetted on 28 May 2012 andcame into force on 1 June 2012.
An applicant who is the author of thework eligible for copyright in Malaysia,the copyright proprietor, assignee ofthe copyright or a licensee of aninterest in the copyright who is aMalaysian citizen or a permanentresident of Malaysia, may file theVoluntary Notification by himself. If heis not a Malaysian citizen or apermanent resident of Malaysia, hemay appoint a representative who is aMalaysian citizen or a permanentresident of Malaysia to file theVoluntary Notification on his behalf.
If the Copyright Office is satisfied thatthe notification filed is in order, theparticulars stated therein shall beentered into the Register of Copyrightand a letter confirming the same willbe sent to the applicant.
A certified true extract from theRegister of Copyright is recognised asprima facie evidence of the particularsentered therein and shall be admissiblein all courts.
Provision of compulsoryregistration of licensingbodies for copyright owners.
A society or an organisation whichintends to operate as a licensing bodyfor copyright owners or for aspecified class of copyright owners isrequired to register itself with theCopyright Office as a ‘Licensing Body’.The Copyright (Licensing Body)Regulations 2012 were gazetted on 28May 2012 and came into force on 1June 2012 to govern the provision ofcompulsory registration of licensing
bodies.
Any society or organization operatingas a Licensing Body prior to 1 March2012 shall continue to operate as aLicensing Body provided that suchsociety or organisation is registeredwith the Copyright Office within 3months from the effective date of theamendment. Otherwise, it will beliable upon conviction for a fine notexceeding RM500,000.00.
A licensing body registered with theCopyright Office shall submit a copyof its profit and loss account, balancesheet and auditor’s report tabled atthe annual general meeting to theCopyright Office within 1 month fromthe date of the annual generalmeeting. Failing which, it will be liableupon conviction for a fine notexceeding RM500,000.00.
The definition of performer has beenamended to include an actor, singer,musician, dancer or any person whoacts, sings, delivers, declaims, plays in,interprets, or otherwise performs aperformance.
Additional provisions are added toprovide an avenue for a performer toapply to the Copyright Tribunal todetermine equitable remuneration toa performer in the absence of acontract or to vary any such contract.
In view of technological developments,a more elaborate provision forcircumvention of technologicalprotection measure and rightmanagement information has beeninserted to the Act.
Additional relief isintroduced.
In addition to the relief of, an orderfor injunction; damages; an accountfor profits and any other order as thecourt deems fit, available to thecopyright owner, the Court may grantstatutory damages of not more thanRM25,000.00 for each work but notmore than RM500,000.00 in total.
New OffencesIt is now an offence under the Act tooperate an audiovisual recordingdevice in a screening room to recordany film in whole or in part. Uponconviction, it is liable to a fine of notless than RM10,000.00 and not morethan RM100,000.00 or toimprisonment for a term not
exceeding 5 years or to both. It is alsoan offence to attempt to do theforegoing and upon conviction, it isliable to a fine of not less thanRM5,000.00 and not more thanRM50,000.00 or to imprisonment fora term not exceeding 1 year or toboth.
Limitation and exemption onthe liability of serviceproviders.
Generally, a service provider shall notbe held liable for copyrightinfringement for merely providingconnection, transmission or routingthrough its primary network.
A service provider shall also not beliable for copyright infringement dueto system caching, storing electroniccopy of the work at the direction ofthe user or referring/linking a userthrough information location toolssuch as a hyperlink or directory.
Additional power granted tothe enforcement officers.
The enforcement officers are grantedadditional power to accesscomputerised or digitalised data andto intercept communications underthe Act.
Admissibility of evidence ofagent provocateur.
It is provided that notwithstanding anywritten law or rule of law to thecontrary, no agent provocateur ispresumed to be unworthy of creditjust because he attempted to abet orabetted the commission of an offenceby any person if such act was for thesole purpose of securing evidenceagainst such person.
It is also provided that any oral orwritten statement made to the agentprovocateur by any personsubsequently charged with an offenceunder the Act shall be admissible asevidence.
Conclusion
The Copyright (Amendment) Act2012 has brought about severalimportant aspects in protectingcopyright in Malaysia. As theamendments have just come intoforce, the effect and enforcements ofthe provisions will need to be seen intime to come.
The 85th PTMG Conference in Barcelonacontinued the trend of each meeting beingbetter than the last.
The inspired choice of host city,Barcelona, must take some credit for theexciting and fun-filled atmosphere. But theorganizers and attendees also played theirvital roles, making this a PTMG that willbe long remembered. Furthermore, thepresentations were consistently excellentand raised issues many may have notconsidered previously.
The conference was also memorable forthe number of “firsts” that it had in store.
Thursday 4 October 2012
Sue Evans gave an inspiring introduction,letting us all know that she was stepping
down as chairman of PTMG, and that shecould not ”begin to tell you how good itfeels”. The handover to Sophie Bodet ofGSK gave us the first of the “firsts”, beingSophie’s first speech. This was much likehanding over the Olympic torch. Sophiegave Sue a glowing thank you and setabout letting the crowd know howexcited she was about the challengesahead. Sophie mentioned that theconference was over-subscribed, but notedthat the intention was never to make theconference bigger than it already is.Quite rightly, Sophie also mentioned theimportance of having attendees from theindustry at PTMG.
Guilherme Cintra (IFPMA) then got theconference “proper” underway with histalk on “Biopharmaceutical InnovationToday Treading New Ground.” Guilhermediscussed the bleak outlook being toutedagainst the actual reality and queried
whether the glass is really half empty orhalf full, and whether we should all startlooking for new jobs! He has charted theevolution of pharmaceutical companiesinto project managers and on thepositive side advised that investors arestill seeing value in the pharmaceuticalindustry.
The second talk of the day was fromSalvador Ferrandis entitled“Pharmaceutical Trade Marks in Spain –What’s New?” Starting with the fact thatnothing revolutionary had occurred inSpanish law that year, Salvador thendiscussed the issues with the Spanishgovernment trying to push downpharmaceutical prices, urging theattendees not to let their children becomepharmacists under any circumstances!
The next speech was another first. Thetalk by Justice Farrukh Khan, of theLahore High Court was entitled“Interface between Politics and the Law –How far can the Judiciary go?” and wasdelivered entirely by video.Notwithstanding that Farrukh Khanwasn’t with us that day, the presentationwas thought provoking in the extremeand the audience was transfixed by theman on the screen!
We were left with the sage advice:“politics and law are like train tracks –they must co-exist in parallel”.
Up next we had yet another first, namelythe first “Founder’s Lecture”, presented byIsabelle Dini of Norgine. The Founder’slecture will be delivered annually at theAutumn Conference by a person selectedby the Management Committee. Isabelle’stalk provided a whirlwind tour throughthe use of the ® and TM symbolsthroughout the world, highlighting trapsfor new (and probably not so new)players. Isabelle’s excellent talk (and visualaids) ended with a personal note of thanksfrom the charming and witty nonagenarianthe Honorary President of PTMG, MrDerek Rossitter. Mr Rossitter gave Isabellethe effusive praise that her talk deserved,and Derek noted that the next generationof professionals such as Isabelle wouldcomprise the future leadership, and ensure
the continuing viability of PTMG. Thestanding ovation that followed was aninspiring and emotional tribute to Derek,and this attendee will certainly neverforget Derek hoisting his cane high intothe air while the crowd cheered him on.
The final session for a jam-packedThursday was a group session on thetopic “Product trade dress and non-traditional trade marks”. Jo Grist of GSKprovided a polished performance, givingthe industry perspective, with particularreference to the purple colourcombination mark used in relation toGSK’s ADVAIR products. Jo discussed thatcase, and the fact that the value of non-traditional marks is (still) underestimated.Jo also discussed the important practical
issue, namely obtaining evidence ofacquired distinctiveness from end usersand how difficult that can be, particularlywhere those users cannot be accessed.This required some creative thinking interms of evidencing secondary meaning,though ultimately the registration wasexpunged.
The next talk was from Grant Lynds ofGowlings. Grant’s engineering backgroundprovided us with his memorable metaphorabout digging into the earth when it is“too dark to see and too far to feel”.Grant noted this was a little like thecourts when they consider trade dresscases. Canadian law had provided a highthreshold for non-traditional marks, and itseemed as though the actual sourceneeded to be known by the relevantconsumers, rather than the fact that themark itself indicated (an albeitanonymous) single source.
Laetitia Benard of Allen & Overy thenprovided an update from France on non-
8
PTMG 85th Conference ReportBarcelona,3rd to 6th October 2012
Realities for pharmaceutical trade marks in the physical and virtual world
Bill Ladas, Corrs, Chambers, Westgarth
traditional marks and particularly the useof trade dress by generics. Laetitiadiscussed various aspects of the Directive,including in relation to comparativeadvertising cases, and also looked atspecific provisions of French law,particularly Article 42 of the French lawon Sanitary Safety. The concerns caused bythat far-reaching provision of French law,expressed by the International Trade MarkAssociation (INTA) in a letter to the EUCommission in June 2012, were alsodiscussed.
The final speaker for Thursday, Mr JamesWeinberger of Fross Zelnick had theunenviable task of talking to a crowd thatsensed that the cava was already flowingpool-side. James dealt with that issue withaplomb, and soon had the crowdentranced by his talk on the developmentof the US law on trade dress. Jamesfocused on “look-alike brand v genericpill” cases, and particularly at the decisionof the US Court of Appeals in Shire v Barr.While that case failed (Shire did not showthat it’s product configuration was “non-functional”), the decision was a creature ofits own unique facts, and James finished upby pointing to some light at the end of thetunnel, referring to the recent decision ofthe 2nd Circuit in Christian Louboutin vYSL (relating to the Red Sole trade markof Louboutin), that re-affirmed theprotectability of colour trade marks.
Friday 5 October 2012Friday’s first three talks related to the“now” topic of social media. Mark Bard’s(Digital Health Coalition) presented someincredible and terrifying statistics as to the
number of users on Facebook and Twitter.Examples of successful and not-so-successful social media forays by pharmawere given, including how to deal withuser-generated content (UGC).
Timothy Pinto (Taylor Wessing) was then
passed the social media baton to discussthe legal risks presented, and looked atUGC further, including themes of“control” and “knowing involvement”. Of
particular practical assistance were theexamples given as to dealing with lettersof demand.
Paul Woods (Paul Woods ComplianceLimited) was the third and final runner inthe social media stakes, and looked at thecodes and regulations relating toadvertising of pharma goods. His keymessage was that companies must complywith the law on the one hand, but on theother hand must also act ethically to buildtrust with their consumers.
Mark, Tim and Pauls’ talks left uswondering what will happen next in thisevolving field.
Christian Rassman (Lorenz Seidler Gossel)
then took us on a stroll through the lawon ambush marketing, with the assistanceof various thoroughly entertaining videoadvertisements featuring the world’s bestfootballers. This provided the same kick (ifyou’ll excuse the pun) as a strong coffeethat many of the attendees may haveneeded after the events of the previousevening at the Cordorniu winery.Christian’s analogy of keeping others outof your wine cellar was particularlymemorable.
Stephen Reid of Imperial Tobacco was upnext. He had the limited benefit of havingreceived the Australian High Court’sdecision on plain packaging at 5am thatmorning. Lucky then that it was only 139pages long Stephen discussed the issuesposed for tobacco and the other legalavenues that were being pursued andprovided an excellent summary. The
regulatory trends and how this would playout for other industries, including alcohol,pharma and fatty foods were alsodiscussed.
The transition from tobacco to healthyfoods may have raised some eyebrows in
the hall but the talk from Antoine deBrosses of Keller & Hickman entitled“Consumer wellness – functional foodsand health claims” was another first forPTMG. Indeed, as a regulatory lawyer,Antoine said he felt like an “alien”compared to other attendees but hecertainly achieved the aim of raisingawareness amongst members on this vitaltopic for the future of the industry and itsborderline competitors. He beratedattendees with the watch words that thecompetition is already ahead of the gamein the area of functional foods.
To conclude the conference, Nick Woodfrom Valideus provided another key update
on gTLDs. For those attendees stillresisting the temptation of the pool, Nickadvised that the next stage of this saga willtake place early in 2013 with the auctionof contested strings, to be organised byICANN. Subsequently, an independentobjector is to police the results by June2013. News of the dollars raised by thewhole process as venture capitalists seizeanother opportunity brought many shakingheads, especially among the sceptics, butthere is no doubt that the statisticsprovided by Nick mean that the future forpharma companies will include these newvirtual addresses.
With that, the conference ended andSophie could rest assured that her firstconference as Chair had achieved thesame high standards as previous ones.Richard Gilbey’s now traditional toast tothe Chair brought the official part of theconference to a close. At the gala dinnerthat night, at the extraordinarily beautifulCastell de Sant Marçal before things reallytook off on the dance floor, the attendeesfell silent waiting for the venue of the2013 PTMG meeting: Vienna! See you allthere.
9
10
IntroductionIn L’Oréal v Bellure, the Court of Justiceof the European Union (CJEU) held thatriding on the coat-tails of a trademarkwith a reputation, in order to benefit fromits power of attraction, its reputation andits prestige, and to exploit the marketingeffort expended by the proprietor of thatmark, is unfair within the meaning of Art.5(2) of First Council Directive89/104/ECC (the TM Directive).
The CJEU clarified that there can be anunfair advantage without the need toshow any detriment to the distinctivecharacter or repute of the registeredmark, although these two elements maybe taken into account in the globalassessment that a court must carry outwhen determining unfair advantage.
In order to determine whether the use ofa sign takes unfair advantage of thedistinctive character or repute of themark, the CJEU indicated that it isnecessary to undertake a globalassessment, taking into account all factorsrelevant to the circumstances of the case,which include the strength of the mark’sreputation, the degree of the mark'sdistinctive character, the degree ofsimilarity between the marks at issue, andthe nature and degree of proximity of thegoods or services concerned. As regardsthe strength of the reputation and thedegree of the mark's distinctive character,the Court has already held that it wouldbe easier to accept that a mark having astrong distinctive character and reputationhas suffered a detriment that would bethe case with a mark having a less strongdistinctive character and reputation. It isalso clear from the case-law that, themore immediately and forcefully that themark is brought to mind by the sign, thegreater the likelihood that the current orfuture use of the sign is taking, or willtake, unfair advantage of the distinctivecharacter or repute of the mark or is, orwill be, detrimental to them.
All the trade mark owner needs to showis that the defendant has obtained acommercial advantage from the reputationof his mark by establishing a link with thatwell-known mark through use of anidentical or similar sign.
Furthermore, the CJEU held that theconcept of unfair advantage of Art. 5(2) ofthe TM Directive and Art. 3(a)(1) of theDirective 84/540/EEC (the ComparativeAdvertising Directive) must in principlehave the same interpretation.
Consequently, the owner of a trademarkcan prevent the use of its mark incomparative advertising if theadvertisement does not satisfy all of theconditions laid down in Art. 3(a)(1) of the
Comparative Advertising Directive
In relation to Art.3(a)(1)(h): comparativeadvertising must not present goods orservices as imitations or replicas of goodsor services, the CJEU clarified that (i) thisprovision does not require the goods tobe counterfeited, (ii) the advert does nothave to be misleading for it to beprohibited, (iii) the imitation could beimplicit or explicit, and (iv) that theimitation could be for the product as awhole or in part. The CJEU further addedthat any advantage gained by theadvertiser by presenting goods or servicesas imitations or replicas would beregarded as taking unfair advantage of thereputation of that mark in breach ofArt.3(a)(1)(g): comparative advertisingmust not take unfair advantage of thereputation of a trade mark.
This article focuses on the differentapproaches recently adopted by theFrench and German courts in relation topharmaceuticals.
GermanyIn a recent decision dealing with thecomparative advertising ofpharmaceuticals, the Hamburg HigherRegional Court applied the CJEUprinciples outlined above in case No. 3 U17/11. The case concerned anadvertisement of a generic manufactureraimed solely at healthcare professionals. Inthe contested advertisement the trademark PROGRAF®, owned by theoriginator of a formerly patentedpharmaceutical product with the activeingredient Tacrolimus, had been integratedinto the logo of a generic manufactureroffering a generic containing the sameactive ingredient Tacrolimus through useof the following “Bioequivalent toPROGRAF®” tagline:
This logo was used as a prominentheading displayed on each page of themulti-page advertisement.
The court held that the use of the trademark PROGRAF® took unfair advantageof the reputation of this trade mark in theparticular context of the comparativeadvertising rules, corresponding to Art. 3 a(1) g of the Directive 84/450/EEC. Thequestion whether the advertisement couldalso be seen as presenting imitations orreplicas of the original product was notraised in this case.
The reputation of the trade mark
PROGRAF® was derived from the factthat PROGRAF® was originally a patentedproduct and had been the only Tacrolimuspreparation on the market for many years.This reputation was, according to thecourt, exploited by the challengedadvertisement by way of an unjustifiedimage transfer. Given the fact that thegeneric manufacturer referred to thebioequivalence to PROGRAF®, and thuspointed out the possibility of substitution,it was held that the addressedprofessionals would transfer thereputation attributed to the trade markPROGRAF® to the generic product.
Taking into account the aims and purposesof Directive 97/55/EC and Directive84/450 EEC as well as the findings of theCJEU in L'Oréal v Bellure, the court heldthat the question of whether the use of athird party trade mark in a comparativeadvertisement constitutes an unfairexploitation of the reputation of thatmark depends on the specificcircumstances of the case but that, inparticular, the interest of the trade markowner in a modest use of its trade markhas to be weighed against both theinterest of the competitor in carrying outeffective advertising and the aim of theDirective 84/450/EEC, namely to enhancemarket transparency for the benefit of theconsumers. By comparison to the HigherRegional Court of Duesseldorf, which heldin case No. I-20 U 126/10 that thereference to a third party trade mark isonly allowed in cases in which thisreference is absolutely necessary for aneffective comparative advertisement, theapproach of the Hamburg court is muchmore flexible.
According to the Hamburg court, thetagline “Bioequivalent to PROGRAF®” asa recurring reference in connection withthe generic manufacturer’s logo impededthe trade mark rights of the originator toan extent that was not justified by theabove-mentioned legitimate interests ofcompetitors and consumers. The courtheld that more cautious kinds of use ofthe trade mark seemed to be available andwhich would have sufficed to reasonablyserve the interests of both the genericmanufacturer and consumers in ensuringeffective comparative advertising. Thecourt emphasized that the genericmanufacturer is well-known to theaddressed professionals, meaning thatthose professionals would deduce fromthe name of the generic company and thereference to the agent Tacrolimus that theadvertised pharmaceutical is a genericproduct of the Tacrolimus preparation ofthe originator.
Comparative Advertising for generics in Germany andFrance after L’Oréal v BellureLaëtitia Bénard-Allen & Overy, Oscar Benito-GSK, Rainer Kaase and Ralf Möller-Harmsen & Utescher
Continued on next page
1
C
What can be learnt from this decision?The owner of a trade mark is not obligedto accept the use of its trade mark simplybecause it is used in a comparativeadvertisement. In fact, the competitorusing a third party trade mark in acomparative advertisement must do so ina modest way, carefully observing theconditions laid out in Directive84/450/EEC and taking into account theinterpretation of the CJEU in L'Oréal vBellure.
FFrraannccee In France, the questions raised bycomparative advertising forpharmaceutical products have beenexamined in the Deroxat “saga”.
In 2003, GlaxoSmithKline and Beechamgroup filed a trade mark infringementaction against the generic companyGGAM (later acquired by Sandoz) forhaving used the trade mark of thereference anti-depressant productDeroxat in an advertisement for itsgeneric product Paroxetine GGAM aimedsolely at healthcare professionals.
In 2006, the Paris Court of Appeal heldthat the mere mention of Deroxat in theadvertisement for the generic productParoxetine GGAM did not qualify ascomparative advertising under Article 3 ofDirective 84/450, because no objectivecomparison between the original productand the generic product was made.Furthermore, it considered that thereproduction of the original product'strademark was not "necessary to indicatethe intended purpose" of the genericproduct under Article 6(c) of the TMDirective, because the mention of theinternational non-proprietary name (INN)on the packaging was sufficient to informprofessionals that the generic productcould be substituted for the originalproduct. Consequently, it concluded thatSandoz was liable for trade markinfringement.
In 2008, the French Supreme Courtquashed the Paris Court of Appealjudgment and returned the case to theVersailles Court of Appeal. According tothe Supreme Court, by presentingParoxetine GGAM as the generic ofDeroxat, the advertisement "objectivelycompares material, relevant, verifiable andrepresentative features of those goods". Asa result, it fell within the definition of
comparative advertising.
The Versailles Court of Appeal had to thenrule on whether, in the circumstances ofthat case, such comparative advertising fellunder Articles 3(a)(1)(g) and (h) of theComparative Advertising Directive, inother words, whether the advertising tookunfair advantage of the reputation of thetrade mark Deroxat or presented thegeneric product Paroxetine GGAM as animitation or replica of Deroxat.
The court held that the conditions set byArticles 3(a)(1)(g) and (h) of the Directivewere met. However, it considered that thecontentious advertisement could notbenefit from the comparative advertisingdefense because the conditions of Article6(c) of the TM Directive were not met. Inthis respect, it further held that thereproduction of the trade mark Deroxatwas not necessary to indicate theintended purpose of Paroxetine GGAM,because this was not the only means bywhich professionals could be informedthat it was the generic of Deroxat (CJEU,Gillette, C-228/03). The court concludedthat the conditions of Article 6(c) of theTM Directive must therefore be satisfiedon a cumulative basis for theadvertisement to be exempted from trademark infringement.
This last finding was quashed by theFrench Supreme Court on 24 May 2011.Making reference to the O2 judgment ofthe CJEU (12 June 2008, C-533/06), whereit was held that the “proprietor of aregistered trade mark is not entitled toprevent the use by a third party of […]his mark in a comparative advertisementwhich satisfies all of the conditions laiddown in Article 3a(1) of Directive 84/450",the French Supreme Court concluded thatthere was no trade mark infringementwhere the conditions provided by theComparative Advertising Directive, asimplemented under French law, weresatisfied.
In relation to the rest of the decision, theFrench Supreme Court confirmed thefindings of the Versailles Court of Appealthat the conditions provided by Articles3(a)(1)(g) and (h) of the Directive weremet. In particular, it held that genericproducts are, by nature, presented asbioequivalent to original products, but notas imitations and that providinginformation to professionals about thepossibility of substituting the genericproduct for the original product was nottaking unfair advantage of the originalproduct trade mark but, rather, enabledthe existence of effective competition inthe market.
This decision, which seems to have beeninfluenced by matters of public policy, hasbeen subject to criticism for not takinginto account all of the holdings set out inL’Oréal v Bellure.
Indeed, the fact that a generic product isbioequivalent to the original product does
not exclude the fact that it could be animitation or replica within the meaning ofArt.3a(1)(h). In this respect, the CJEUruled in L’Oréal v Bellure that "it isirrelevant in that regard whether theadvertisement indicates that it relates toan imitation of the product bearing aprotected mark as a whole or merely theimitation of an essential characteristic ofthat product". Thus, the decision of theFrench Supreme Court does not seem toconcord with the findings of the CJEU.
In addition, it cannot seemingly bedisputed that, in the present case, thereference to the DEROXAT trade markcan have no purpose other than tointroduce the generic product in the wakeof the original product, in order toimmediately benefit from the reputation ofthe trademark under which the originalproduct is marketed. The French SupremeCourt decision thus seems to be totally atodds with the findings of the CJEU inL’Oréal v Bellure, with that Court clearlyholding that "the taking of unfairadvantage of the distinctive character orthe reputation of a mark, within themeaning of that provision, does notrequire that there be a likelihood ofconfusion or a likelihood of detriment tothe distinctive character or the reputationof the mark or, more generally, to itsproprietor. The advantage arising from theuse by a third party of a sign similar to amark with a reputation is an advantagetaken unfairly by that third party of thedistinctive character or the repute of thatmark where that party seeks by that useto ride on the coat-tails of the mark witha reputation in order to benefit from thepower of attraction, the reputation andthe prestige of that mark and to exploit,without paying any financial compensation,the marketing effort expended by theproprietor of the mark in order to createand maintain the mark’s image".
ConclusionOne may wonder whether the impact ofthe Deroxat precedent should be limitedto the specific circumstances of that case.In particular, the courts took into accountthe fact that the reference to DEROXATwas in brackets and in smaller charactersthan the rest of the advertisement, that itwas not reproduced on the packaging ofthe generic product which illustrated theadvertisement, and that the advertisementwas aimed at professionals. However,these are circumstances that are notdissimilar from those that were present inthe PROGRAF® case, where thereproduction of the original product'strade mark in the advertisement for thegeneric product was held to take unfairadvantage of its reputation. In such a case,comparative advertising is not permittedunder Articles 3a(1)(g) of theComparative Advertising Directive.
These points might merit furtherclarification from the CJEU.
A recent decision of the Australian TradeMarks Office will be welcomed bypharmaceutical companies seeking toregister trade marks containing an INNstem.
The decision indicates the Office may bewilling to take a more flexible andpractical approach, considering all therelevant circumstances, when consideringwhether a trade mark containing an INNstem is likely to deceive or causeconfusion or carry a connotation.
A trade mark application will receive anobjection if, because of some connotationof or within the trade mark, the use ofthe trade mark in relation to the appliedfor goods or services would be likely todeceive or cause confusion (section 43 ofthe Trade Marks Act 1995 (Cth)).
The recent practice of the Office hasbeen to automatically raise an objectionunder section 43 where a trade mark tobe used in relation to pharmaceuticals,veterinary substances or pesticidescontains an INN stem "in a meaningfulway", and the goods covered by thespecification are not restricted tosubstances indicated by the INN stem.
Consideration of whether the stem isincorporated “in a meaningful way" hasled to inconsistency, since many marksfall in the grey area between non-meaningful (eg. the stem –AST in FAST)and meaningful (eg. the stem–GLIFLOZEN in AGLIFLOZEN). Manyexaminers have been reluctant towithdraw objections even when facedwith evidence that confusion ordeception is not likely to arise, forinstance due to market or state of theRegister evidence.
BBooeehhrriinnggeerr''ss aa pppplliiccaa ttiioonn ffoorrZZEELLCCIIVVOOLL:
Boehringer Ingelheim International GmbH(Boehringer) requested protection inAustralia of an International RegistrationDesignating Australia (IRDA) for the
trade mark ZELCIVOL forpharmaceutical preparations in class 5.
The application received a section 43objection on the basis that the markcontained the suffix –OL which is an INNstem said by the Examiner to indicateALCOHOL or PHENOL derivatives. Ifthe mark was not to be used for goodsor services containing or relating to thesesubstances, the Examiner considered themark would be likely to deceive orconfuse consumers. The objection would,however, be overcome by agreeing tothe following endorsement on theregistration:
"It is a condition of registration that anyuse in respect of pharmaceuticals will belimited to such goods containingsubstances belonging to thepharmacological group designated by theInternational Non-Proprietary Namestem OL".
Trade mark registrations in Australia canbe cancelled on the ground that such acondition entered in the Register inrelation to the trade mark has beencontravened. Arguably, such a conditioncould also expose the registration to therisk of partial removal for non-use intime.
The Hearing Officer found that the use ofthe INN stem was unlikely to deceive orcause confusion and accepted the IRDAfor protection in Australia.
Taking a sensible and pragmatic approach,he outlined the following generalprinciples such that where most of thefollowing factors are present a section 43objection should not be raised on thebasis of an INN stem contained within amark:
The suffix is in common use other thanas an INN stem, as evidenced by boththe state of the Register and themarketplace.
The INN stem is 2 or 3 letters long.
There are other or alternative obvioussuffixes present in the trade mark.
The INN stem is non-specific – in thecontext of the trade mark, the stemwould not generally be apprehended as
indicating only a particular kind ofpharmaceutical.
The Hearing Officer also took note ofthe fact that a number of othercomparable countries had extendedprotection to the IRDA without raisingobjection or requiring the restriction. Healso noted that other government bodiesare better placed to assess deception inthe marketplace and, consequently, anobjection under section 43 will only existwhere there is a real tangible danger ofdeception or confusion arising.
The Trade Marks Office is currentlyconducting a review of its practice withregard to trade marks containing INNstems, with an outcome expected in early2013. This decision may provide an earlyindication of a shift in the practice,suggesting a more sensible and flexibleapproach may be taken with respect tofuture applications.
This decision should be welcomed bypharmaceutical companies, seeking toclear global product names in Australia.Pharmaceutical companies should reviewtheir pending applications facing class 5objections to determine whether furthersubmissions might now overcome theobjection in light of this recent decision.
12
Australia Case Notes: Principles for Office objections totrade marks containing INN stemsCarly Mansell, Davies Collison Cave
86thPTMG
Conference
Hamburg
18th - 19th March2013
Registration will open on PTMG website in mid
January 2013
13
Where were you brought upand educated?
Raised and educated in Twickenham –Trafalgar School and HamptonGrammar. On to The School ofPharmacy, University of London formy B Pharm and UL again as anexternal student for my LLB. (I alsohave an NVQ in Spectator safety formy volunteer stewarding role!)
How did you become involvedin trade marks?
Whilst working at the WellcomeFoundation where I was RegulatoryController. I joined a team workingwith Geoff Foot engaged in litigationwith the UK government concerningthe supply of a parallel importedproduct and whether it complied withthe Medicines Act in respect of thenature and quality documented(known as the Septrin/ Eusaprim case).We won in the court of first instancebut lost in the Court of Appeal and inthe House of Lords. We all enjoyedour trip to the House of Lords whichstarted with a typical Geoff Footbreakfast of a bacon buttie in a GreasySpoon café!
What would you have done ifyou hadn’t become involvedin intellectual property?
I would have loved to have been a TVsports commentator.
Which three words would youuse to describe yourself?
Not too serious!
Complete the followingsentence. If I have time tomyself …
I like to read poetry (particularlyRoger McGough) and sometimestry to write it.
Complete the sentence: I’m nogood at …
DIY
What is your biggest regret?
Failing my mid session exams atUniversity and missing the chance torepresent GB in rowing at the MexicoOlympics.
What is your favourite workof art?
The Persistence of Memory bySalvador Dali.
What is the soundtrack toyour life?
Street Fighting Man – The RollingStones
What is your philosophy ina nutshell?
“In every job that’s to be done thereis an element of fun” just like MaryPoppins
What is your weakness?
Chocolate!
Which book or books are youcurrently reading?
By my bedside a thriller “Blood Line”Felix Francis, an autobiography
“Beware of the Dog” Brian Moore, apoetry book “The Anthology of Birds”
What music is in the CDplayer in your car / what isyour iPod set to at themoment?
The Rolling Stones (always!)
What is your favourite fooddish?
My wife’s Lobster & champagnerisotto.
What is comfort eating foryou?
Fish & Chips and Blackcurrant crumble
Which is your favouriterestaurant?
The Glasshouse Kew
What is your favourite drink?
Champagne, preferably LouisRoederer Cristal (or real ale in a pub).
What is your favouriteholiday destination?
The Galapagos Islands – like walkinginto another world where time hasstood still and the animals have nofear of man.
Do you have any unfulfilledambitions?
To visit India and see tigers in thewild, to see all of Shakespeare’s plays(still 7 to go!)
PROFILE: Alan HunterAlan is the editor of several books on the legal classification
of medicines for Royal Pharmaceutical Society of Great Britain(RPSGB) law department and acted as undercover agent for RPSGBInspectorate. He has worked as Regulatory Controller for theWellcome Foundation, advising on legal and Code of Practice issues.Alan was Board Secretary and Director of Law, IP and Regulatory atthe Association of the British Pharmaceutical Industry (ABPI),serving on government and international committees representingthe pharmaceutical industry. He is past chairman of TheOrganisation for Professionals in Regulatory Affairs (TOPRA) andholds fellowships of TOPRA, RPSGB and the Royal Society ofMedicine. Current activities include serving on the PTMGManagement Committee, TOPRA Fellowship Panel, Editorial Boardof the Journal of Pharmaceutical Medicine and the PharmacyAdvisory Group, Kingston University.
